Protecting Artists' Works by Using the Lanham Act

Authored by Christiana Lewis Barnhardt and B. Brett Heavner

During the past few years, publishers and media creators have become increasingly cautious about publishing material that may offend a particular group of people or sect of society. As such, publishers have been more active in "policing" artists' and authors' works by taking out offensive and potentially reactionary material before the work is published. Recent examples of this type of behavior include a video rental chain removing nudity from films it rents; the cable network Comedy Central censoring an episode of its animated program South Park by editing out an image of Mohammed; and the Washington Post's decision not to publish an August 2007 Opus cartoon that poked fun at Islamic fundamentalists. However, in some instances this policing behavior of publishers damages the integrity of an artist's work itself by failing to portray the work as the artist intended. As a result, many artists are now asking what they can do to legally protect the integrity and meaning of their works.

Although copyright law protects artists' works from being destroyed or mutilated, as well as artists' rights to reproduce and create derivative copies of their works, it does not provide any legal recourse for artists when their works are edited or dramatically altered after the copyright in the works is legally licensed or sold to a third party. 17 U.S.C. 106(a). Thus, some artists have explored the limits of unfair competition law to oppose confusing or false representations of their work.

Section 43(a) of the Lanham Act protects artists in two distinct ways. Section 43(a)(1)(A) protects artists against confusion or deception as to the origin, sponsorship or approval of their goods, services or commercial activities. 15 U.S.C. 1125(a)(1)(A). Section 43(a)(1)(B) protects artists against the misrepresentation of the nature, characteristics, qualities or geographic origin of their goods, services or commercial activities through commercial advertising or promotion. 15 U.S.C. 1125(a)(1)(B). Thus, while 43(a)(1)(A) protects against customer confusion regarding the source of artists' works, 43(a)(1)(B) protects against third parties misrepresenting artists' works through commercial activity.

Two cases that are particularly instructive on the scope of protection that § 43(a) provides against the editing of artists' works without their authorization are Gilliam v. American Broadcast Co., 538 F.2d 14 (2d Cir. 1976), and Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).

In Gilliam, Terry Gilliam sued the American Broadcasting Co. (ABC) after ABC edited Gilliam's Monty Python programs to omit any "offensive" and "obscene" matter from the broadcast. Gilliam, 538 F.2d at 18. Appalled at the humorless mutilation that resulted from ABC's editing, Gilliam sued and sought an injunction to prohibit the broadcast of ABC's altered version. Gilliam appealed to the 2d U.S. Circuit Court of Appeals after the district court denied his request for an injunction.

On appeal, the 2d Circuit found that ABC's edited broadcast violated § 43(a) because it created a false impression of the product's origin and represented to the public a distortion of Gilliam's work that was actually a "mere caricature" of the actors' talents. Id. at 25. As such, it granted the injunction and held that Gilliam had an actionable claim under unfair competition law to prevent the presentation of its work to the public in a distorted form.

As a result of the 2d Circuit's ruling in Gilliam, in the years following the decision it appeared that § 43(a) granted artists the right of attribution for their works.

However, less than 20 years later in Dastar, the U.S. Supreme Court narrowed the protection granted by the 2d Circuit. In Dastar, Fox claimed that Dastar violated § 43(a)(1)(A) of the Lanham Act when it purchased copies of the television show Crusade in Europe that were in the public domain and re-edited them into a new video set titled World War II Campaigns. Fox claimed, as the producer of the original television show, that Dastar should have acknowledged its reliance on Fox's original show in making "World War II Campaigns," and that failure to do so was a "bodily appropriation" of Fox's television series "sufficient to establish reverse passing off." Dastar, 539 U.S. at 27.

In its analysis, the court focused on the phrase "origin of good" found in the Lanham Act. Although the lower courts had relied upon this phrase to hold that Dastar's video confused customers as to the "source" or "origin" of the video, the court concluded that the act was designed to protect the producer of tangible goods that are offered for sale, and not to protect the author of any idea, concept or communication embodied in those goods. Therefore, the court held that Fox could not prevail on its Lanham Act claim because Dastar was the actual "origin" of products it sold on its own. The court specifically suggested, however, that Fox could pursue a "false advertising" claim under § 43(a)(1)(B). Id. at 38.

Thus, after the Dastar decision, it appeared that artists could no longer claim that a publisher's edits created a false designation of "origin" under § 43(a) of the Lanham Act. However, this may not be entirely true, as § 43(a) does not prevent artists from dissociating themselves from works that have been edited without their permission.

To illustrate this point, suppose that a famous building muralist, Anne Artist, contacts an attorney about the unauthorized editing of her work. Anne was originally employed as a staff artist by New York City's Urban Development Department, and during the past decade her murals have become extremely famous for their risqué themes that feature city nightlife.

Recently, Anne has become aware of Acme Publishing's imminent publication of a book featuring edited photographs of her early New York City building murals. Acme licensed the photographs from New York City and edited them without Anne's consent. Anne believes that the essence of her murals has been lost as a result of the editing, and has threatened legal action against Acme Publishing.

Based on Gilliam and Dastar, how should counsel advise Anne or Acme regarding the unauthorized editing? Here are the important questions to ask:

• What are the terms of the contract? If there is a contract between Anne and her former employer, the attorney should consider the terms of the agreement. Does the agreement grant Anne the right to approve future renderings of her work? If so, Anne may have a breach of contract claim against the city. Here, however, it appears that the murals featured in the book were done early in Anne's career within the scope of her employment with New York City. Thus, it is likely that the murals were done as a work-for-hire, and that Anne does not have any rights regarding later publications of the works.

Although it may not be applicable in Anne's case, it is also important to consider whether the contract terms provide exceptions to amend an artist's work because of governmental or media regulations. If the contract does allow for a publisher or media sources to amend the work for such regulations, the attorney should consider whether the edits made to the work were made in accordance with those regulations. If the contract does not include such exceptions for regulations, the attorney must determine whether the contract provides the publisher or media source with the artistic license to change or amend the work as it sees fit.

• Will consumers recognize the artist as the originator of the work that has been or will be altered? This is an important point to clarify because it goes directly to how Anne may or may not be harmed by the altered photographs of her murals. In Gilliam, the 2nd Circuit noted that it was the actors who suffered as a result of ABC's mutilation of the broadcast because the public understood that the broadcast show was written and performed by the actors.

In Dastar, the court held no such injury existed because consumers did not associate Fox as the creative talent behind the series. Similarly, when advising Anne in the hypothetical dispute, it is important to understand whether people will immediately recognize, or be told by the text, that the murals featured in the new publication are Anne's works. If not, Anne may not be able to argue that her business or personal reputation has been harmed by Acme's edits to her murals. Context may also affect this issue. If Acme's book is an art retrospective, and is using the photos because they represent Anne's early works, injury is more likely than if the presence of Anne's murals in the photos is merely incidental and has nothing to do with the subject matter of the book.

• How much of the work has been edited? The most important issue, however, is whether Acme has edited the photographs of Anne's works so much that they no longer represents her original works. To meet this standard, when viewed in the works' entirety, Acme's alterations must be substantial. Minimal changes that leave the meaning and integrity of the works intact will not be enough to assert a claim under § 43(a).

Therefore, when evaluating this point, counsel should consider whether the altered works still communicate the same concepts the artist was trying to convey. Works that have been modified so much that the meaning behind them has changed may be considered "substantial" alterations. However, a court will probably not consider minor alterations to works that do not significantly change the context or meaning of them violations of the Lanham Act. Here, if Acme's alterations of the murals eliminates their humor, theme or principal message, Anne's counsel should take an aggressive approach, and Acme's counsel should recommend that Acme rethink the alterations.

A court may be reluctant to award damages, but instead may favor an injunction against further publication of her works. Therefore, Anne's counsel should determine whether a permanent injunction is sufficient to protect her reputation, and should explain that a large damages award may be difficult to obtain. Similarly, Acme's counsel should fully apprise Acme of the cost of an injunction that would forbid further publication of the books with the altered photographs.

The court could order that Acme include a disclaimer in the book that the edited murals are not Anne's original works. If this is a feasible remedy, counsel should discuss the language of the disclaimer with Anne and Acme.

In sum, although Dastar significantly limited the protection afforded to artists in Gilliam, an artist like Anne may still find protection under the Lanham Act for the integrity of her work. However, as protection under § 43(a)(1)(A) is limited to works that confuse consumers as to their "origin," protection under this part of the statute may be limited to artists who do not want to be associated with their modified works. Nevertheless, this protection may help prevent artists from being associated with views of publishers with which they do not agree. Thus, artists may find unfair competition law, specifically claims of false designation of origin and false advertising under § 43(a) of the Lanham Act, a helpful ally in preserving their integrity and reputation regarding their works.

This article is reprinted with permission from the December 2007 issue of the National Law Journal, 2007 ALM Properties Inc. Further duplication without permission is prohibited.  All rights reserved.

Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes and is not intended to constitute legal advice. This memorandum may be considered advertising under applicable state laws.