Can someone legally sell plaques of your pages?

[[{"type":"media","view_mode":"media_large","fid":"1828","attributes":{"class":"media-image size-medium wp-image-904 alignleft","typeof":"foaf:Image","style":"","width":"300","height":"171","alt":"Ask an attorney watler web"}}]]Q: A national company has been selling plaques with miniaturized versions of actual newspaper pages. The plaques are marketed to individuals and businesses that have appeared in the newspaper. Is it a violation of copyright law for the company to sell these plaques? A: Your newspaper may well have a possible complaint about this use of your pages, depending on all the circumstances. However, a newspaper may want to tread carefully in making a complaint because publishers often engage in marketing that may implicate the same copyright considerations. For instance, newspapers are frequent beneficiaries of the fair use doctrine in the news reporting realm, as I discuss below. Thus, a publisher may want to avoid questioning another’s use of the doctrine. This type of product is what copyright law refers to as a “derivative work.” A derivative work is based on someone else’s preexisting work. In other words, a derivative work makes modifications to another’s work in order to create a “new version.” A plaque with a miniaturized reproduction of a newspaper page and a personalized note would typically be considered a derivative work. Before determining whether a derivative work of this kind runs afoul of copyright law, it is important to first understand the protection that a copyright affords. One such protection is the exclusive right to prepare derivative works based upon the original, and to distribute and display such works. The real question here is whether the sales of the plaque without your permission constitute a fair use of your copyrighted work. In the fair use analysis, a court considers the purpose and character of the use, the nature of the original work, the amount of the original that is used, and, most importantly, the effect on the potential value of the original. Common examples of fair use include news reporting, teaching and research. Courts often shy away from finding fair use in instances where someone profits from the sale of another’s copyrighted material, but this factor is not always dispositive. For example, one court found it was fair use for a book author to reproduce Grateful Dead concert posters as thumbnail images on a timeline. The court focused on the fact that the images were thumbnail size and reproduced for informational purposes. Yet another case involved a situation where a publisher used copyrighted magazine covers in a biography about the artist who designed the covers. In finding fair use, the court held that the focus of the derivative work was the artist, not the magazine covers themselves. Additionally, the court found it persuasive that the magazines were no longer in print, meaning the market for the magazines was not negatively impacted. While the fair use doctrine may indeed apply to derivative works, the owner of the original retains the right to authorize derivative works. Consequently, the unauthorized production and sale of derivative works may constitute copyright infringement if the derivative work is not considered fair use. But as illustrated above, predicting how a court will analyze any given case can be a challenge. So how does a publisher or editor determine whether one of these plaques infringes on the newspaper’s copyright? As a practical matter, it helps to think of it as a two-step process. First, determine if the derivative work falls within the fair use doctrine. A good rule of thumb is to look at the purpose for which the derivative work is being used. If it is being used for news reporting, teaching, research, and the like, then it is more likely to be considered fair use. If, on the other hand, the derivative work is being sold commercially, then it is less likely to be considered fair use. Here, it appears that the plaques are being sold commercially, which tilts away from finding it is a fair use. Furthermore, the newspaper page is the entire focus of the plaque — rather than a mere thumbnail — which further tilts away from fair use. Second, determine whether the derivative work simply utilizes the underlying facts or whether it instead depicts the exact words and arrangement used in the original story. Copyright protection does not extend to the underlying facts of a news story, but it does extend to the actual words and arrangement used by the author. For instance, if a newspaper publishes a story about a car accident, the publisher cannot copyright the facts of the story (e.g., the color of the car, the location of the accident, etc.). It can, however, copyright the actual written story along with any proprietary photos or infographics that are published with the story. Accordingly, a plaque with an exact copy of the front page is probably not the type of derivative work that merely utilizes the underlying facts of the story. Of course that is not to say that a newspaper cannot profit from its own pages. In a seminal California case, a court dismissed a lawsuit brought by NFL quarterback Joe Montana against the San Jose Mercury News for selling posters of the newspaper’s front page that included a photo of Montana. The court ultimately determined that a newspaper has a constitutional right to promote itself by reproducing its own news stories. Your newspaper has the same right, and the plaque depicting your actual page may be an infringement of that right. Ultimately, the remedy for infringement of your copyright is a suit in federal court. Sometimes a cease and desist letter by an attorney as a preliminary step to litigation suffices to stop the infringing activity. Obviously such letters and lawsuits involve retaining a lawyer to represent you; you will want a lawyer experienced in federal copyright law. Many such lawyers charge for their services on an hourly fee basis, but some may consider taking a case on a contingent fee basis. Many lawyers will provide an initial consultation on a no-obligation basis.   Paul C. Watler, a partner in TPA sponsor Jackson Walker LLP, is a board certified civil trial lawyer. He has been recognized by “Best Lawyers in America” since 1995 in the category of First Amendment law and was named the “Go To” lawyer in Texas for media litigation by Texas Lawyer magazine. You may follow Paul on Twitter @pwatler.