Mugs on mugs and the many faces of merchandise

Ant Horn is an Administration Officer at Arts Law

What is the situation where you want to take the photo of a famous or not so famous person and have it printed on a coffee mug or a T-Shirt. There are a number of things you should consider before you start rolling things off the production line.

Am I allowed to use the photograph?

Photographs are property and like other property such as a house or a car you need the owner's permission to use them. Also you may be required to pay a fee for this permission much like you would if you leased a house or hired a car. However the terms of the lease, or licence as it is called with regard to photographs, will be different to a house. It may also not be as easy to establish who the owner is.

Who do I need permission from?

The first is the person or organisation that owns the copyright in the photograph. Generally this will be the photographer. There are however a number of exceptions to this rule such as where the photographer has taken the photograph in the course of their employment. In that case the employer will be the copyright owner.

Another exception applies to photograph's taken before 30 July 1998. In the case of these the person who paid for the photographs to be taken will be the copyright owner unless there is an agreement otherwise. There are other exceptions and we recommend that you contact Arts Law, the Copyright Council, Viscopy or a lawyer to establish the true copyright owner.

Secondly you may need to get permission from the subject of the photograph i.e. the face you want to use. In Australia there is no specific right of publicity or right of personality protecting the use of peoples' images as in the United States and some European countries. However this does not mean that you can necessarily go around making T-Shirts with someone's image on them. It is still possible for someone to prevent their image being used in a number of ways. They could bring an action for defamation, passing off or under Trade Practices legislation. Arts Law's information sheet Unauthorised Use of Your Image gives more details on these legal remedies.

Another consideration is trade mark law. The Trade Marks Act 1995 affords some protection to celebrity personality. Although it is not possible to register a 'personality' as a trade mark it is possible to register things such as portraits, images and signatures.

What kind of permission is best?

The best kind of permission is written permission. With photographs there are generally two types of permission. The first is an assignment of copyright. With assignment the copyright owner (the Assignor) passes ownership in the copyright to you (the Assignee). You are then free to deal with the photograph as you see fit.
The other approach is to obtain a licence to use the image from the copyright owner. A licence should stipulate where, how and for how long the image is licensed for and whether it is exclusive or non-exclusive. For example it might say that the copyright owner gives the Big T-Shirt Co a licence to use the photo of 'Big Bad Barry' on T-shirts in Australia for two years. On this basis if the Big T-Shirt Co wanted to use the photo on T-Shirts in France they would have to get the licence extended to include France. Similarly if they wanted to put the image on coffee mugs they would have to get that included in the licence. It is therefore important when negotiating a licence to consider what you currently want to use the image for and what you may want to use it for in the future.

There are other important terms that should be included in a licence. Arts Law has a sample Image Reproduction Licence available for purchase and you should always seek legal advice before signing any licence.

What are Moral Rights?

As of December 21 2000 moral rights are provided for in the Copyright Act 1968 and place certain obligations on anyone using someone else's photograph. Firstly whenever the photograph is used the photographer has the right to be attributed as the photographer. Secondly the photographer can take action against anyone who falsely attributes the photograph as the work of someone else. Thirdly the photographer can take action if their photographs are treated in a derogatory fashion or in a way that would prejudice their reputation. It is important to note that moral rights exist independently of copyright. The photographer will therefore maintain their moral rights even if they are not the copyright owner. Also moral rights cannot be assigned, licensed or otherwise contracted out.

In Conclusion

Always get permission. Ask yourself who the people involved in producing the photograph are. Chances are you will need to get permission from one if not all of them. For help with tracking down copyright owners contact Viscopy.

In this article merchandise has been discussed generally with reference to T-Shirts and coffee mugs. Similar rules will apply if you want to reproduce a photograph on other kinds of products or in other situations. Also the situation will be similar with other non-photographic images. We recommend that you seek legal advice if you are not unsure of your position.

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