Legal Question in Intellectual Property in California

A friend and I apparently (my memory of this is very hazy, he tells me he remembers clearly) made an agreement about 7 years ago that he could use some of my copyrighted art (which he had commissioned and paid for, for a book he wrote) for other purposes for his business. My understanding was that it would be for non-commercial purposes (ie advertising, brochures, etc.) and that if he were to use it in any product which he would be receiving money for, we'd have to talk about it. But my memory is dim, and he claims that he asked me for, and I sold him, infinite reproduction rights for all purposes for all time and space. The payment I received was no more than several hundred dollars (we probably have no record of this, I believe it was a cash transaction, again his memory of it) but the commercial value of my work according to a conservative valuation based on standard industry prices is a minimum of $10,000. He recently told me that he intends to use my work in a new book. I told him I was not comfortable with this, and he said that he has every right based on our agreement, and intends to go ahead. I don't believe we have anything in writing, and my intention was to sell him only the non-commercial reproduction rights (and the amount of money exchanged would have been about right for this.) Is it possible for him to claim the right to reproduce my work based on a 7 year old oral agreement I'm not totally clear that I made, and which would violate my intention of his future use of my work? What if I actually had agreed to the agreement he says we made, but on my assumption that he would not use it in a way to take advantage of me - in other words, I agreed based on guarantees implied by our previous conversations (he said there would be more books, so there would be more work for me, which I took to imply that he would commission and pay for new work to be used in future books.) Again, I believe there is no paper trail of agreements or money exchanged. He has been extremely adversarial in conversations we've had where I pointed out that the value he claims to have received from me is far in excess of what he paid. Is a disputed 7 year old oral contract (his wife will also be willing to validate his version in court) enough to protect him from a claim of copyright infringement?


Asked on 4/23/12, 1:42 pm

1 Answer from Attorneys

Jim Betinol Withrow and Betinol Law

You ask whether a disputed 7-year old oral contract would be enough to protect your friend from a claim of copyright infringement. The short answer is it depends.

Under, 17 U.S.C. �204(a), an agreement for an exclusive license to a copyright requires that the transfer be in writing. So if it was for an exclusive license or if he is claiming that he has exclusive license to use your work (meaning he is the only one who can use the copyrighted work and you are not allowed to sell the work to anyone else), you might be able to reclaim the ownership of the copyright for the lack of a written agreement. However, copyright law does not require nonexclusive licenses to be in writing, so if this is the case, your situation will be far more complicated (if you want to discuss this further, feel free to give me a call).

Additionally, ownership to the copyrighted material depends on whether you produced the work as a work-for-hire. If the work is produced as a work-for-hire, the ownership of the copyright automatically transfers to the employer. The limited information you provided makes it difficult for me to determine what sort of working relationship you had with your friend when you produced the work. If you want to talk about it further, feel free to contact me or an intellectual property attorney in your area.

Kind regards,

Jim Betinol, Partner

[email protected]

Withrow & Betinol Law

424-229-2560

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Answered on 4/23/12, 2:38 pm


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