The other day a client sent me two pictures. One was of a someone else’s textile design, and the other was my client’s own rendering of it. The client said “We copied our design from their design. Can you tell us whether it’s infringing?”
Rather than respond to the email, I called my client and reminded him about the rules of discovery: although any communications I have with my clients—including communications in which a client admits to having copied something—are protected by attorney-client privilege, mistakes can happen when even privileged documents are inadvertently produced in discovery in the event of a lawsuit. Also, if he inadvertently shares those communications with third parties, the attorney-client privilege goes out the window. So, saying incriminating things in emails (or texts or worst of all social media) can live forever in a way that’s inconvenient if not destructive.
As I learned more about the situation, my client explained to me why he thought he might be in the clear: He had heard from someone who heard from someone that if someone makes a certain number of changes to the original work, then the new work is not infringing.
That rule doesn’t exist in copyright law.
The test for copyright infringement is whether the work has been copied. The way that is normally determined is a two-step process:
- Did the infringer have access to the original work (through the internet, catalogs, magazines, etc.)?
- Is it substantially similar to the original work?
I also had some good news. Copyright protects the expression of an idea—it does not protect the idea itself. In looking at the two works that my client sent me, it was obvious that he made a lot of changes. In fact, the only similarity was that he used the same colors—and it’s almost impossible to claim copyright in colors.
Since the design elements had been changed so much, I suggested that my client should continue that trend and literally change everything by starting from scratch. If he wanted to express the same idea differently (with a different design), it would not be infringing because he would not have copied! This may seem obvious, yet an educated, professional graphic designer almost got caught up in a legal myth—one that seems to have an unfortunately long shelf life, much like these chestnuts:
- If there is no copyright symbol I am free to use this work.
- This work is publicly available, therefore in the public domain, therefore I can use it any way I please.
- I’m using the work for charity or I’m offering my work for free, so I am not infringing.
I’m very happy that my client contacted me before going ahead with his original plan. Getting counsel is always less expensive than receiving and having to respond to a demand letter for copyright infringement. To paraphrase a popular car insurance commercial: 15 minutes can save you $500,000.
Mark S. Kaufman
Kaufman & Kahn
747 Third Avenue
New York, NY 10017
Tel. (212) 293-5556
Fax. (212) 355-5009