Episode Transcript
[00:00:00] Speaker A: Welcome to Monument Matters, a podcast produced by the Monument Builders of North America for all things memorialization.
Each episode is an extension of our monthly magazine, MB News.
[00:00:12] Speaker B: I'm your host Mike Johns, CMAICA from the Johns Claribelli Company Cimarano Monuments and Flowers in Cleveland, Ohio. I'm also a past president of the Monument Builders of North America.
Today and in the September edition of MB News, we're speaking Cussing Copyrights and their use in the creation of Monuments and Cemetery Memorials.
Our guests are Jacqueline Flint and Kevin Tharp, partners at Riley Bennett Eglov. Sorry Jacqueline and Kevin, thanks for joining us today.
[00:00:46] Speaker A: Thanks for having us.
[00:00:48] Speaker C: Thank you.
[00:00:49] Speaker B: So folks, if you've ever wondered whether your designs are protected, what to do if you are asked by a family to protect create a design with a well known image, this episode is for you.
Jacqueline is well respected for her intellectual property practice where she provides legal counsel on trademark and copyright cases.
Kevin's Focus Kevin focuses his efforts on issues facing the construction industry, working closely with this facilities.
So got some questions for the panel today.
So let's start with the basics. What exactly is copyright and how does it apply to lining builders?
[00:01:27] Speaker A: Sure. So a copyright at its very base level is an original work of authorship that's fixed in a tangible medium. That's essentially what the US Government, through the Copyright act has defined a copyright to be.
So there's three different aspects of that definition. One, it has to be a work of authorship.
Authorship, meaning that it can't be generated by anything that's not human. It has to be something that you create to form this form of expression. Two, fixed in a tangible medium. So that means something that you can actually see, touch, feel.
So for the purposes of the monument industry, that's usually a pretty easy bar because it's usually in some sculpted work in the form of a monument, in a tangible form of stone or some other material similar to that.
The third part of that definition is the originality aspect. And that's really what I think is probably the most relevant to this industry is how do you define originality at the very base level? What that means under the law is that there has to be some level of minimal spark of creativity associated with this.
It can't just be something that's generally in the public domain.
It can't be something that was copied, which we'll get to that as well. You have to have some level of minimum spark to meet what should be a pretty, pretty low bar for the originality aspect of this. If you meet those three Definitions, you can have a copyright essentially at the point of creation.
Now the value of that copyright changes based off of whether or not there's a registration. And we can talk a little bit more about that. But that's at its very base level, what a copyright is.
[00:03:18] Speaker C: To chime in on that, I think it's important and useful to distinguish copyright law from some other areas of the law that apply to intellectual property generally.
And I think that the most common misconceptions, if you will, or misunderstandings is the confusion between copyright law and trademark law and then also patent law.
So patent law by and large protects ideas concepts.
In contrast, copyright law protects how those ideas are expressed.
So copyright law doesn't protect an idea.
But there may be, we, you may have several different authors talking about the same idea, but they're all expressing it in different ways. And the way that they express it, the words that they use or in the case of an artistic work that the images that they use, the elements of an artistic work or how they express their, the, the idea or the concept that they're, that they're talking about.
So that's, that's the difference between those two.
One that we'll talk likely talk about later in the podcast is trademark law and how that differs from copyright.
Trademark law protects a symbol that is used to identify a source of a product or a service in commerce.
So you think of the Pepsi logo or other famous logos that sellers of products use to identify their products in commerce.
That's different from copyright, which is not is not used to identify the source of a good or a service in commerce, but instead is it itself is the good in question, if you will, psych the book or a painting or a sculpture or a monument or something else. So we'll talk a little bit more about the interplay between trademark and copyright here as we go along.
[00:05:33] Speaker B: So then, what are the best ways to avoid infringing on someone else's guide?
[00:05:38] Speaker C: Well, there's some good news and some bad news.
The I'll start with the. Start with the bad news. There's, there's really two questions that I hear there and Mike's question. The first one is how do I make sure that I don't actually infringe on somebody's copyright? And then the second one is is there anything I can do to make sure that I never receive one of these claims?
Regardless, regardless of the merits remark. Regardless of the merits of the claims.
Addressing the second one first, the answer is, unfortunately, no.
There are many blessings to live in the United States of America.
There's plenty of opportunity here. But unfortunately, there are some drawbacks, and one of them is, in America, anybody can sue anybody for anything. That doesn't necessarily mean that it has merit. It doesn't mean if you go to court that you're going to lose.
But this is an open society. We have open courts, and people are free to make whatever claims that they choose. And so while you can conform your conduct in a way to minimize the likelihood that if you ever have a claim made against you that you will have legal liability for that, there isn't anything that you can do to absolutely insulate yourself from ever receiving a claim like this. Because the, whether it's the personality of the claimants, their creativity, their imagination, what have you, you just can't possibly anticipate what somebody might think is the basis of a claim. So if you think that's possible, you can rest assured it's not possible to completely insulate yourself from a claim.
But turning back to the first question, which is how do you protect yourself or what can you do to minimize the likelihood that you are found to have infringed somebody else's copyright? Part of the challenge here is that there are things that you can do, but again, there isn't anything that you can do, practically speaking, that is going to make you absolutely immune from these claims on the merits.
So, for example, if you had an encyclopedic memory and you could remember all of the registrations for monument designs in the United States, then, yes, it would then be possible for you, when you encounter a new design, to say, hey, you know what? That looks an awful lot like this registration over here.
But nobody has that ability. Right?
And even if you, even if you had that ability, different people might have different opinions about the similarities between the two. That's why we have juries when we go to court and the jury tells us whether, whether that there's too much in the way of similarity there.
So having said that, there are some things that you can do that that will help you out. One of them is as much as you can create your own designs or be certain about the source of the designs that are presented to you.
[00:08:56] Speaker B: That.
[00:08:57] Speaker C: Doesn'T mean that it's, that nobody will ever make a claim that, that you've infringed, you know, somebody else's copyright through a, A, a design that you created. That still happens, it's still possible, but it greatly minimizes the risk.
And understanding that, as Jackie said, copyright protects original works of authorship. It's the Originality here, that's important. So the more that you have comfort that what you're designing here or putting on a monument is original either to you or to somebody or your customer or otherwise is on the, on the flip side, maybe in the public domain, you're confident that this particular star, this particular heart, whatever it is, element we're talking about, that nobody has any claim to that.
That also helps insulate you from these claims on the merits.
I would also suggest that aside from creating your own designs, having, if you're a customer, presents you with a design, for example, don't just accept that design at face value.
Politely and respectfully. Drill down on a little bit as far as what, what the details are.
Where, where did they get this?
It may be that what they're presenting you is clearly a photograph of something that they pulled off the Internet. And so that should lead you to ask a series of questions. What site did you get this from?
And if it turns out that they pulled it from another monument designer and builder's website, well, that should be a red flag for you that maybe it's not guaranteed that it's going to be copyrighted, but maybe this is copyrighted. And I need to ask some additional questions.
[00:10:43] Speaker B: So I'm sorry, Kevin, right ahead, real quick.
So let's say a family does come in with an image or a concept.
Just how far off of that mark do you need to be to be safe?
Is there a rule of thumb or is that still a very judgmental kind of call?
[00:11:11] Speaker C: It is. And the classic lawyer answer always is, well, it depends on the circumstances, Mike, but it really does. So just to throw out a couple of concepts to illustrate the point, there is one registered copyright and design of a monument that I'm familiar with that has a tree that takes up the left hand side of the monument.
Well, does that mean that the registrant there has the exclusive right to use trees on, on monuments? No, that is not what that means.
You can have. Others can create their own designs that have trees or other plants on the monument.
But the level of difference to get you to the point where you don't have to worry about infringing on the copyright, very much depends on how that tree, for example, is presented.
Is it on the left side of the monument or is it on the right side of the monument? Is it the same type of tree? Is it deciduous tree versus a pine tree or something along those lines?
Is the angle different, the number of leaves different? Does it leave a different impression?
Somebody looking at it will say hey, you know what? That looks an awful lot like this registered copyright over here versus I don't see any similarity between the two other than they just happen to both have trees.
That's really where it comes down to. The other considerations are what else is in the or in the design?
Are there other elements that are present in your design that are not present in the registered copyrighted design and what those elements could be? I mean that, you know, the limit is human imagination.
[00:13:12] Speaker A: Right. And I'll just add, I'll add to that, that when a design is subject to a copyright, only the original elements of that design are what is protected.
So a generic tree is not going to be protected. That's going to be part of the public domain. What you do to that tree, to Kevin's point, and how many leaves, how many branches, where are they placed? All of those are the original elements. So to the extent that there's substantial similarity and we can talk about the elements of an infringement suit and how that plays in, it's going to be the substantial similarity to only those original elements of the design that's at issue.
So in talking a little bit about what infringement lawsuit looks like, to know whether or not you infringed is going to be a determination made by a court ultimately and a set of fact finders that could be a judge, that could be a jury, depends on the suit at issue. But the elements that they're looking for in that is, is there evidence that copying of the copyrighted work took place? And you can show that in one of two ways. First, you can show, yes, they actually copied my design and here's evidence of that actual copy. That's pretty rare. That doesn't usually happen in most cases. Most cases will rely on the other option, which is a circumstantial evaluation that's based off of two elements. First, access to the copyrighted work, whether or not somebody actually could look at that work and use that as inspiration for the alleged infringement. And two, the substantial similarity, which is what we were talking about just a second ago, how much of it is actually similar, that's very much a judgment call of the fact finder that's going to be at play.
There's not going to be a whole lot of baseline that we can say black and white, that this is going to be substantially similar. It's going to be an evaluation of the court.
[00:15:06] Speaker B: So we, it's, it's very difficult from what I can gather. You know, in the, in the article you reference a website where you can go and look up copyrighted works. But there's no images that are provided, there's just descriptions.
So even there, trying to do your due diligence, it's challenging. Right? I mean, you can't. There's no catalog that will flip through these pages. Here's a, here's a catalog of copyrighted designs. Stay away from these.
So I think probably in my estimation, if you are a designer, keeping all of your work product that led you to the final design. Right. Is going to be certainly a way to help defend yourself from claims. Where did this idea come from?
[00:16:07] Speaker A: Yeah, absolutely.
And in reference to the website that we talk about, what we reference is the United States Copyright Office's database. And you can do some base level searches there.
The it, what is the minimum base level requirement for that is very simple. It's ownership. A name of the design, the type of medium in which it's in. So the tangible medium that you find it in. So in the case of monument designs, that could either be a drawing of the design itself or a sculpted or a sculpture of the actual monument. But it's gonna be one of those two things. More than likely.
That's really it. As far as what the US Copyright Office requires, owners can be more detailed in that. And frankly, I think it's incumbent on the owners to provide more detail because what they're trying to do is protect their, their, their property, their copyright property.
How do you protect that if you don't actually provide notice of what that is?
So the more detail the better as far as an owner's ability to protect its copyright. But as far as the base level is concerned, it's very minimal for that purpose. Once you would find something in that database, say for example, since we've been talking about trees, you could put in tree monument into the database and it will spit out a list of various monuments to go look at. The ownership is listed there. So you can then start researching based off of what's there to see what design that might be based off of the ownership. And see is this going to be something that's going to be problematic.
Again, the base level that we have for many copyright infringement lawsuits is the question about access.
So to the extent though there's a question about access to a particular copyrighted work, the more research you do, the higher likelihood you're going to have access to that work. So there's a certain level of balance to that equation as well.
You want to make sure that you are protecting yourself if you do in fact have access to something. So Say, for example, a customer brings in an image and says, I would like a monument of that. You want to make sure that you don't just take that at face value. You do some level of research to that fear also not required to find every possible opportunity where this could be exposed.
[00:18:33] Speaker B: So let's, let's shift for a second because this is another side of the whole copyright concern for a monument builder is family comes in with an image.
Not a design per se, but a logo, a football team, or a Disney character or cartoon image.
How did the rules work there?
[00:18:58] Speaker C: So this is.
I was anticipating this discussion when I foreshadowed the trademark law discussion previously because this is an area where it's less about a copyright infringement or copyright doesn't apply so much as trademark law does. Because the logo, the logo that we're talking about, for example, let's say it's a, you know, a football team is there. The what is conveyed by that logo is the association between that logo and the sports team in question.
And so if you've got a loved one who's recently passed, who is a fan of the Colts, for example, and you know that they would really want and appreciate to have the Colts horseshoe logo on their stone, then you know that at this point, you've potentially got a trademark law issue here.
And the issue there is just simply this.
The football team may assume, rightly, that anybody who views that stone will assume that there is a connection or an association between the team and the provider of that stone, either because the team has endorsed them in some way, or perhaps there's a sponsorship agreement or something along those lines. And so the team wants to exercise control over the extent of those associations, either because it wants to protect its own brand, or it just wants to control the flow of money.
And so that's really the concern here. That's, that's the legal concern is to what extent are we putting, by putting this logo on the monument, are we creating this association that might cause, for example, the football team to be unhappy and potentially make a claim for trademark infringement?
This should lead a monument builder to have a conversation with the family about the risks associated with this and whether they want to proceed. And it should also cause the monument builder to decide whether he or she wants to proceed with this particular logo on this particular stone. And the reason why I say may is because while there can be legal liability for this, it won't necessarily always lead to legal liability. And I'm going to discuss a few of the conversations or a few of the Reasons why that is.
First and foremost, it's entirely possible that the owner of the trademark will never discover the use.
And if they never discover the use, then they're never going to make a claim and it's never an issue.
This is more likely to be the case where the monument builder doesn't advertise that they provide these services or they don't put a monument on their, a picture of the monument on their website with, for example, the Culp's logo on it.
Because that's where most holders or owners of intellectual property are doing their investigation is online. They can sit at their computer and have access to a treasure trove of information about potential infringement across, across the country.
The only way they're going to stumble on, on it is if they see it in a cemetery, for example, and the risk of that happening is relatively small, although that monument is going to be there for a very long time.
The second consideration is that even if it's discovered, the owner of the, the, the holder of the mark may not do anything about it.
And the reason for that is that they are likely going to exercise their business judgment and decide whether they really want to be in the business of making these kinds of claims or not, because they know that the, the, their, their fan interest is what's making them money, whether it's tickets, whether it's merchandise, what have you.
So the last thing they want to do is, you know, cause people to lose interest in the team or have bad feelings about the team because they make this claim.
Even if they do something about it, the chances are good it's going to be limited to a letter that they send. Hey, we see this, this is technically infringement. Don't do this again.
And that's the end of it.
And that is a reflection of the business judgment where on the one hand, under trademark law, they want to make sure that they're protecting their interest so that they've got a record of, hey, we're monitoring it and when we see infringement, we do something about it. But at the same time, they don't want to make a claim about it. They want to be able to demonstrate that they, that they're policing their trademark rights.
[00:24:03] Speaker B: So is it fair to say that the infringement really takes place when you are using that mark for profit as opposed to for allegiance, I guess, or out of respect for the team? Like, you know, I'm a big fan, so I want people to know that I was a big fan. As opposed to, we are the monument builder of the, the Colts.
[00:24:34] Speaker C: Correct.
[00:24:35] Speaker B: There's a definite distinction.
[00:24:36] Speaker C: Right, correct. And, and you've, you've kind of hit the nail on the head, Mike, that it's the for profit aspect of this that is really going to get the attention of the owner of the ip and also understand that again, the economics of this, you can't ignore them. Right. If you've got one stone that's a one off that happens to have the Colts logo on it, the owner of the IP is going to feel very differently about that than if you sold 10,000 T shirts with that, with that, with that logo on it. Because one, you've got 10,000 sales, not just one. And two, the T shirt is something that, that, that the team owner absolutely is in the market of selling as opposed to a monument which is probably, probably off their radar screen.
[00:25:31] Speaker A: I'll just add to that that in the world of trademark as well, part of the IP is the brand itself and how that brand is utilized, the imagery of that brand and so on. So there's some aspects of it that are more than just commerce based. And whether or not it's something for profit, it can be. Does this align with the image that we are trying to establish with this brand? So while with the sports team that might not be so relevant. Relevant other marks that might be of bigger concern and that can constitute an infringement of that trademark as well.
I'll say too that copyright is not immune from this. I think you mentioned earlier you said something about like Disney characters, for example, those would not be subject to a trademark, those would be subject to a copyright.
And all of these aspects, that would be some. Well, they could actually be both. But all these aspects, a license from the owner is always going to be the safest bet. Now that's not always going to be the most practical sense of this, but that would be a way to insulate yourself from, from having those infringement suits. Is going to seek out a license with respect to a copyright in particular, there's certain rights that are associated with the copyright. One of those is to create derivative works or to stop the creation of derivative works. In this case, that could kind of be perceived as a derivative of the original copyright. So for example, there's a copyright in, you know, various Disney characters, as you mentioned, going to be able to do something with those Disney characters would be considered a derivative work and you would need a license to be able to do that.
[00:27:08] Speaker B: Where do we go from here? There's still a lot of ground to cover and not a lot of time, but.
So let's talk about this you receive a cease and desist letter from something that claims you're infringing, what do I do?
[00:27:26] Speaker A: So I think there's a few things to do when you look at that letter. The first would be think about whether or not you need to contact an attorney to help you evaluate those things. But what we've talked about already is kind of the evaluation process of how an infringement takes place. You're going to know if you created a monument, you're going to have an idea of how that monument got to be created and what you used as your inspiration for that.
Did you have access to something? Is there some merit to the fact that what you used could have been something that was known to be copywritten?
That's one step of that equation. Then looking at it and seeing, okay, what's original about this? Can I decipher what's original and what's substantially similar between what I created and what's said to be copywritten? And kind of doing some of that analysis for yourself with the understanding that the burden of proof falls on the owner of the copyright to show that there's been an infringement that took place.
Again, an attorney will be very helpful in helping to evaluate those questions. The next aspect of that is what's the economic value of this issue? How much am I actually going to be hurting from this in an economic sense?
And to look at that, you can kind of think about what the damages are that's associated with a copyright infringement. There are a few different ways that damages can be assessed in a copyright case. Largely that depends on whether or not a mark has been registered and when it was registered. So that can be another aspect of this is going to see, is there an actual registration for the mark that's being or for the copyright that's being claimed here? And we can go back to the US database to help figure that question out. And then you look at the timing of that registration.
If that was registered within the last week, for example, and it was after the alleged infringement that they're claiming, the damages are going to look very different than if it's been registered for years and it was registered at the time of the alleged infringing act, in the event that there's only a recent registration that can be utilized, the only damage in it in that the infringing or allegedly infringing act took place before. The only damages that are going to be available are actual damages that can be proven. So in the case of copyrights in the monument industry, largely that's going to be based off of a lost profit sort of analysis. What did they lose out on because of this particular infringing? Allegedly infringing work.
If a registration existed at the time of the alleged infringing conduct, that opens the door to statutory damages and attorneys fees as well. And the statutory damage analysis, those can range from $750 per infringement to several thousand, $10,000 per infringement. If it's a willful act, that can increase even higher and go into, you know, $250,000 at that point.
There's a certain level of that you need to show for that. And it has to be a pretty bad act for that to take place. The amount of the actual statutory damage is going to be determined by a court as to what's justified based off of the circumstances.
So that's what we're looking at with that, as well as, again, the attorney fee aspect. So the cost for filing the lawsuit, the cost for the attorney working those suits on behalf of the owner, would all be part of the damage calculation based off of that registration.
[00:30:48] Speaker C: I think a couple of other things to keep in mind here are one that we've already mentioned, which is economically, how big of a problem is this?
Did I, as the recipient of this letter, did I sell one monument or have I sold dozens?
Because it's at that point, as Jackie mentioned, that the range of statutory damages there, that, that range of that dollar range that she mentioned may not be scary initially, but you multiply that by 12, 24, 36, however many there are, then it becomes a really big number.
So that's, that's a consideration. The other consideration is, to what extent can I make this somebody else's problem?
And that would be if you got the monument in question, if you got it out of a catalog. And then at that point, you.
One thing to consider is, should I be approaching the person or the company that I bought this from to say, hey, I've received this cease and desist letter.
Let's talk about this.
Obviously, I don't view this as my problem since I got this monument from you.
And so then that. That is another. Another consideration versus where you dealt with the person who provided with. Provided the design, or maybe you created the design. And under those circumstances, you really don't have the ability to make it somebody else's problem.
[00:32:17] Speaker B: But just because you want to make it someone else's problem, and just because you did buy it, rook catalog or what have you, doesn't necessarily get you off the hook. Either does.
[00:32:30] Speaker C: Does not.
But in our experience, most of the Owners of these copyright registrations are looking for the folks who are engaged in repeated infringement.
And it may very well be that, you know, they're not as interested in you if you only sold one. But perhaps, and it's up to you whether you want to disclose this or not before a lawsuit's file.
Hey, but I got this from somebody else.
And it may be that the owner of the copyright is much more interested and where you got it, because then that potentially opens that person up for damages if they've engaged in repeated acts of infringement.
[00:33:21] Speaker B: So let's talk a little bit about work inspired by another work.
How does that play?
[00:33:32] Speaker A: So I think that goes to some of the questions we were talking about earlier and really the substantial similarity evaluation.
Inspiration is one thing, copying is another and copying is what we're worried about. So what did you do with that work to create something new? What is original between those two components?
And that evaluation is really going to be the answer there.
There's not, again, there's not really a black and white. We can say if you take 80% of this, if AI tells you 80% of this is to the, to the next thing, there's not going to be a real rhyme or reason to that. It's going to be a subjective determination by a finder of fact in an infringement suit. That would be the ultimate factor there.
The more dissimilar you can show from a copyrighted work, the better off you are.
So I would try to, to the extent you're using something as inspiration, make sure you're creating something new that is outside of the scope of what's there.
[00:34:35] Speaker C: And also keep in mind that I'm not an artist by any stretch of the imagination and the world is probably glad for that.
But understand that the similarities don't necessarily, the differences don't have to be great as long as they're intentional from an artistic standpoint. So for example, this doesn't really work in the context of monuments, but just using this as an example, photography, the differences in lighting, the differences in angle, whether you're looking at it from the bottom or the top or the side or what have you of the subject, even if it's the same subject from my standpoint as a non artist, that doesn't necessarily mean a lot. But if you are a photographer or an artist, those things matter greatly because there's all kinds of things that are associated with that or that are communicated through that, through those choices that are significant in the art world, for example. So I think the key is when if you are inspired by something but you're not copying it, what are the differences and are you able to articulate those differences and why did you choose those differences? What was it that you were thinking about that you thought, hey, I think this has more greater commercial appeal this way? Or is this providing a slightly different Am I conveying a different emotion through by presenting it this way? Just being intentional about about being able to identify what those differences are and why you chose?
[00:36:13] Speaker B: I think. Well, I think we pretty much run our time today, although I think most of our listeners are going to appreciate we have just scratched the surface of this ever recurring question.
I think that the best way to protect yourself is to be creative and use your own work. Jackie and Kevin Partners in Riley Bennett and Ed Love thank you for taking time out of your day for to join us and to share with our members.
As we mentioned, the September issue of MB News has the article on copyright challenges. I urge you to read it and as always, if you have a topic that you think would be of interest to other monument builders, please let us know. Again, thanks for listening to monument matters. MB&A invites you to stay connected through Facebook and LinkedIn. If you found this information helpful. I hope you will share the link with a friend or a colleague.
For mbna, I'm Michael Johns. Thanks for taking time out of your day to listen again. For comments and feedback, please drop a note to infoonumentbuilders.org have a great day.
