How Far Can a Brand Commercialize Contracted Works? | Scope of Copyright

New questions were recently uncovered concerning how far a brand can go when it comes to reusing copyrighted works they contracted for use from a third party. What’s the real scope of copyright works?

Photographer Claims Her Work of Cats on Glass for Fresh Step Taken Outside of Scope of Copyright Agreement

In a copyright infringement claim, photographer Jill Greenberg alleges that McGarryBowen and Clorox Company went far beyond the scope of copyright work contracted for when they hired her to shoot photographs of five cats on glass to play off a popular social-media meme for use in advertising under their Fresh Step kitty litter brand.  

While Greenberg was compensated for the portraits she shot of the cats, Greenberg alleges that despite a provision that specifically excludes the right to video use, her copyrighted work ended up on local TV news broadcasts, the “Ellen” show, and a number of other viral video uses on the Internet that came about as a deliberate result of the defendants’ actions. Per the scope of the copyright agreement, Greenberg claims these are unauthorized uses of her work.

Scope of Copyright Use Blown Out of Boundaries of Agreement Provisions

Additionally, Greenberg alleges that the defendants also used her work in pop-up galleries that promoted adoption of shelter cats, which again went beyond the scope of the contracted copyright agreement.  Specifically, Greenberg noted in her complaint that she was neither contacted nor invited when her work was hung and promoted in these New York and Los Angeles galleries.  Greenberg also complains that McGarryBowen and Clorox’s use of her work went beyond the scope of the copyright agreement when they further paid social media influencers to post videos they had taken of Greenberg’s work while it was hung in the Los Angeles and New York galleries.

Lastly, Greenberg alleges that the scope of the copyright agreement did not cover use for allowing her work to become downloadable art, photographs, and mobile wallpaper on devices in connection with Fresh Step’s Paw Points loyalty program.  In this aspect, she alleges that this unauthorized use is comparable to selling her work as merchandise.

In response, the defendants have so far declined to comment nor have they taken steps to remove the contested uses despite multiple discussions between the parties as well as a cease-and-desist letters sent in November.

The Importance of Well-Written Copyright Agreements

This situation is a good example of how and why the scope of copyright agreements should be written in an easy to understand and clear-cut manner. Agreements should help to avoid the potential for later infringement and be useful in proving that there was indeed infringement when it does happen, as well as outline the repercussions of breach. Whether a party inadvertently or purposely treads outside the scope of a copyright’s agreement terms, the agreement should be written in a manner to help protect both parties in a fair manner. Additionally, copyright attorneys, as well as copyright artists, should follow this lawsuit as it winds its way through the court system. It may answer, or at least foreshadow, new precedent for questions raised about infringing use of contracted copyright works made-for-hire that intentionally or unintentionally go viral and scope of use gets out of control.

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