This article has been written by Arkadyuti Sarkar, pursuing the Diploma Programme in Intellectual Property, Media, and Entertainment Laws from LawSikho. This article exhaustively discusses the ways of protecting paintings from being copied by others.

Introduction

An artwork or drawing requires a certain level of labour, skill, time, and other requirements for its creation by the artist or the painter. For an artist or a painter, his creations are therefore his most valuable assets.

An asset, as we acknowledge, requires some degrees of protection such that it is not stolen or claimed by others as their object of ownership. An artist’s work can end up as someone else’s product, marketing piece, or website, while lacking the permission or consent from the original artist/creator, defying him from earning any royalty from such work.

The artwork/painting may have even gone through modification or might lack the credit in disclosing its real creator. Many artists and painters have a false impression that nothing adequate can be done to stop this or just plainly lack the know-how of protecting their pieces.

However. It is imperative that the artists/painters are well acknowledged about the rights available at their disposal for protecting their creations. Also, the mere acknowledgement of the rights is inadequate for the creators in securing their artworks from being copied, they must, therefore, be well aware of the essential measures in case of infringement of their works.

Types of protection

The following forms of protection exist for artworks within the ambit of intellectual property rights

Copyright

Copyright is a form of protection granted to the intellectual properties under Indian law to the creators of original works of authorship such as literary works (including computer programs, tables, and compilations including computer databases which may be expressed in words, codes, schemes or in any other form, including a machine-readable medium), dramatic, musical and artistic works, cinematographic films and sound recordings.

Copyright law safeguards expressions of ideas rather than the ideas themselves. According to Section 13 of the Copyright Act 1957, copyright protection is conferred on literary works, dramatic works, musical works, artistic works, cinematograph films, and sound recording. For eg: books and computer programs are protected under the Act as literary works.

Copyright refers to a bundle of exclusive rights vested in the copyright owner by virtue of Section 14 of the Act. These rights can be exercised only by the owner of the copyright or by any other person who is duly licensed in this regard by the owner of the copyright. These rights include the right of adaptation, right of reproduction, right of publication, right to make translations, communication to the public, etc.

Artworks automatically secure copyright protection, right from the moment of their creation. Copyright renders protection to the expression of an idea but not the idea itself. An idea is capable of being expressed via photographs, songs, poems, sculptures, and paintings. Copyright extends protection to the original creator or actual owner of a subject or object of the copyright in regards to some exclusive rights. Such exclusive rights include the following:

1. Right to copy;
2. Right to distribute;
3. Right to publicly perform; and
4. The right to make derivative works.

When an art piece is sold, the selling of its tangible parts is done, for eg: the canvas and the frame. However, the ownership over the image remains with its creator. The buyer obtains an implied license for the personal use of the artwork or drawing. The sale does not empower the buyer with the exclusive rights mentioned above. Thus, if a third party purchases the painting and, without the artist’s permission, puts it in a gallery for display while charging an admission fee to view it, they would be deemed to have overtaken their licensing rights and also violated the author’s copyright. Similarly, derivative works are protected – an important concept for an artist to comprehend. Recreation of someone else’s work by making some alterations or modifications is just plain unacceptable. There is a popular misconception that modification of someone else’s work up to a certain degree or percentage can actually dodge infringement. But in actuality, no such test is in existence. The ascertaining question is whether the second creator simply used the idea or concept, or if he or she began with the original work and then modified it. In the latter case, such work shall be deemed a derivative work.

Copyright ownership remains with the creator of the work and not with the person who commissioned the work. Someone excluding the artist can own a piece of work provided it is under the statutory definition of a “work made for hire,” or if the copyright is assigned in writing. If the artist is an employee assigned to create the work, then the employer will own the piece. In case the artist is not an employee, then the person hiring the artist will own the work provided the copyright is assigned to him/her in writing, or if the work was “a work specially ordered or commissioned for contributing to a collective work, as part of a motion picture or other audiovisual work and if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” Photographs, paintings, or sculptures that are not commissioned for use as a contribution to a collective work cannot be works made for hire but can still be assigned through a written assignment of the copyright.

Copyrights last for a period of 60 years initiating from the year of the death of the author.

Trademark

According to Section 2 (zb) of the Trade Mark Act, 1999, trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours.

Trademarks, in opposition to copyright which usually lasts for 60 years, are renewable after every 10 years. The possibility of registering artistic work as trademarks, to obtain longer protection after the expiration of copyright protection, appears to be a clever strategy for the owners of the pieces or the museums possessing them. However, it is not as easy as it appears.

In 2017, The Municipality of Oslo had applied for the registration of several trademarks consisting of depictions of artworks by the Norwegian artist Gustav Vigeland, all of them were exclusive of copyright because of the termination of the protection period. The EFTA Court clearly stated that theoretically, nothing prevents a sign from obtaining protection under both the trademark and the copyright law as the trademark law does not distinguish as to the legality of a sign that can constitute a trademark and because both rights have varying purposes.

However, it also pointed out that the end of copyright protection after a fixed period also serves the principles of legal certainty and protects legitimate expectations that, after such a period, the creative content becomes usable without limitation. Once any work appears in the public domain, individual protection no longer exists for that work and that is the reason several criteria need satisfaction if such work is rendered trademark protection, thereby resulting in potentially everlasting exclusivity.

Firstly, the work must satisfy the essential operations of a trademark, namely guaranteeing the identity of the origin of the marked product, so that the consumer is able in distinguishing the commodity from those of others, without a single dearth of confusion. The essential question is, does the consumer perceive the artistic work to identify the artist or commodities from a separate entity?

Secondly, the work should be required to remain available for trivial use. According to the Court “certain pieces of art may enjoy a particular status as prominent parts of a nation’s cultural heritage, an emblem of sovereignty or of the nation’s foundations and values. Trademark registration may even be considered a misappropriation or the desecration of the artist’s work, especially if it is granted for the commodities contradicting the values of the artist or the message communicated through the artwork in consideration. Thus, the possibility cannot be ruled out that trademark registration of an artwork may be perceived by the average consumer in the EFTA State in question as offensive and therefore as contrary to accepted moral standards”   

Based on the EFTA (European Free Trade Association) Court’s advisory guidance, NIPO (National Intellectual Property Office) made application of these principles and rejected the trademarks, thereby considering Vigeland`s work to be part of the Norwegian cultural heritage and unprotected by one single entity.

A comparable question that was not raised in Vigeland´s case, but which would have arisen if the artwork had qualified for the trademark registration, would have been when, and to what extent, the use of artistic work is considered trademark use. According to the current case law, the use of figurative elements or depictions deemed to be for decorative purposes is not considered as trademark use. This is relevant not solely for maintaining a valid trademark registration, but also to make an evaluation of infringement cases because if a figurative element is used only as a decoration and not as a trademark, its use cannot be deemed an infringement.

Consequently, artworks face not only the restraints from distinctiveness and morality for their registration as a trademark after the end of the copyright protection, but if registered, they also need to be used as a trademark for enjoying their validity.

Design registration

For drawing the attention of the purchasers, an article requires visual attractiveness which enhances the marketability of the article. Thus for obtaining protection, the design must be appealing to the eye. This means that the design must primarily be aesthetic in nature.

Although a product design may also have technical and functional specifications, the industrial design as a parcel of the intellectual property rights refers solely to the aesthetic nature of the final product, and must also be different from any technical or functional aspects. Therefore, from the IPR perspective, an industrial design refers only to the ornamental/aesthetic specifics of a product.

According to Section 2(d) of the Designs Act 2000; design consists of:

1. Three-dimensional features, for eg: the shape of the product;
2. Two-dimensional features, for eg: the ornamentations, aesthetics, patterns, lines, the colour of a product, etc;
3. A combination of one or two of such characteristics.

So suppose Mr. Mathur draws down the design of a car which is entirely new or Mr. Malhotra draws a new smartphone design. In both these cases, the drawings or artworks are capable of protection under both the Copyright and as industrial designs.

Patent

A patent is a legal document granted by the government entitling an inventor with the exclusive right to make, use, and sell an invention for a specified time period. Patents are also granted for significant improvements on previously invented items.

The goal of the patent system is to encourage inventors in advancing the state of technology by granting them special rights so as to benefit them from their inventions. Books, movies, and works of art are non-patentable, but protection is available for such items under the copyright law.

Patent law centers around the concept of novelty and inventive step. The right which they accord is preventing all others, not just imitators but even the independent devisors of the same idea from using the invention for the duration of the patent. The special potential of a patent is accordingly that it may be used to prevent all others from including any form of the invention in their goods and services. A patent thus poses serious difficulties for its competitors. This is why patents are not freely available for all industrial improvements but only what is judged to qualify as a patentable invention.

The arts and crafts industry deserves special consideration when it comes down to patent protection. Copyrights protect the designs and methods of crafters from imitation and copying. However, copyright protection does not secure certain areas of the art and craft industry, for eg: the functional features, or the fundamental methods of their creation.

Crafters making utilitarian objects, as well as the designers of a special method of producing the object, will probably require a patent from copies being made.

Not every sort of artwork or crafts is eligible for copyright protection. Examples of non-patentable items include:

• Clothing
• Vessels
• Handbags
• Furniture

It’s possible that certain parts of the craft may be copyright-protected, such as graphic design, sculptural art, or other pictorial feature that is not necessarily part of the object itself and can, therefore, exist independently. For example a graphic tee. Although the shirt itself would not be eligible to be protected by copyright, the graphic design that is printed on it may be.

There’s often a fine line between the art and the utility. Deciding whether certain features are truly independent of the function of the products, requires careful deliberation. For example, a Shaker basket cannot be copyrighted because it is primarily designed for utilitarian purposes. Contrarily, a contemporary basket intended as a decorative object would be different and may be eligible.

If an item cannot be copyrighted, it may be protected by means of the patent instead. There are certain requisites for being patented.

Firstly, the item must be non-obvious, i.e. an average person who is skilled in a related field would not come up with the same item or method for producing it. Secondly, the item must be novel, which means that nobody else has already designed and produced it.

Ensuring the protection of artwork

Add a copyright notice

On being granted, this will only refrain the legally obedient individuals from copying or imitating an artwork. Anyone determined to steal a work will steal it no matter what type of copyright notice is being used. However, if a copyright notice is being included in each image then it must be adequately prominent, people who might be unaware of the legalities might take a second for rethinking what they’re about to do.

Take action immediately on infringement

On finding someone using the work without permission, the artist or the legal owner of the work should at first politely mail the user and disclose his own identity, and assert to them that the user is using such work without the creator’s permission, and ask them to take the work down. Most of the time, the infringer will be unaware that they have done anything wrong and will do as asked.

It is better to provide an opportunity for compliance prior to hitting the infringers with both barrels and a nasty, legal-sounding email. (24-48) hours is an adequate time period since many people may not have direct access to their websites.

If the above steps are unfruitful, it is time for mailing a legal notice. Most of those being unresponsive to the polite email or letter will most likely respond to a letter written under a legal letterhead.

Conclusion

In the end, after reading and analyzing various aspects it can be observed that the paintings are usually protected under the copyright legislation in general as artistic works. However, as opposed to the usual 60 years of copyright protection in exclusion of the life of the artist, paintings or artworks can also be protected as trademarks for a period of 10 years and renewed subsequently. This is possible as the trademark protection includes graphics, logos, marks, etc.

Apart from copyright and trademark protection, artworks or paintings can also be safeguarded under the patent laws. Copyrights protect the designs and methods of crafters from imitation and copying. However, copyright protection does not extend to certain areas of the art and craft industry, for eg: the functional features, or the fundamental methods of their creation. These areas, however, comes under the protection of the patent with some exceptions although.

Apart from all these, the best way of protecting and artwork can be done by the addition of copyright notice to it, such that everyone is aware that such artwork is copyrighted. However, this step shall only be effective for the law-abiding individuals but not the disobedient ones. Therefore, it is imperative on the part of the creator or his agent to take immediate legal action on seeing any infringement of the copyrighted work.

References

1. Law Relating to Intellectual Property Rights (3rd Edition) by Dr. VK Ahuja
2. https://www.hg.org/legal-articles/protect-your-artwork-18750
3. https://inspiredthinking.dehns.com/post/102em3o/works-of-art-in-public-domain-and-trade-mark-protection
4. https://www.upcounsel.com/how-to-patent-artwork
5. https://emptyeasel.com/2017/07/31/8-ways-to-protect-your-artwork-images-from-being-copied-online/