Don’t “Die Cut” Copyright Corners

[FAQ]

Don’t “Die Cut” Copyright Corners

Potential Copyright Pitfalls When Making Custom Dies

K.V. Fogarty, General Counsel, Ellison Educational Equipment, Inc., Newport Beach, CA, USA

Making custom dies for customers is one of the most important income-producing services for a diemaker. But, along with the reward of increased revenue from making custom dies comes the risk that a diemaker may be liable for copyright infringement if he makes custom dies for customers who do not have the authority to commission the custom work.

A diemaker’s exposure to liability is increasingly real because of the nationwide memory album craze. Consumers across the country are buying literally millions of decorative paper diecut shapes to place in their scrapbooks. Of course what follows rising consumer demand is the enterprising businessperson who desires to capitalize on the trend by offering large varieties of paper cutouts for sale. To create inventory, that entrepreneur will most likely seek out a diemaker and/or diecutter of decorative shapes to have dies made and cutouts produced. But that entrepreneur may not have the right to authorize the diemaker to make the decorative die to yield the shapes because the shape or artwork is already copyrighted by someone else. Here is where the potential pitfall lies for the diemaker.

The liability a diemaker may suffer by making unauthorized decorative custom dies is called contributory copyright infringement. Contributory infringement can also occur if a die cutter merely cuts the shapes from an unauthorized custom die but did not actually make the die himself. Only the copyright owner or someone authorized by them can commission the custom die work or subsequent reproduction of the shapes. For example, only the Disney Company or someone authorized by Disney can give a diemaker the authority to make a custom die of Mickey Mouse or to reproduce shapes made from a Mickey Mouse die.

Copyright law says, contributory infringement occurs the moment a diemaker contributes his labor to a die that a reasonable diemaker would have inquired whether an infringement was occurring. To continue to use the Disney example, if someone asked a diemaker to make a custom die of Mickey Mouse or cut out Mickey shapes, would a reasonable diemaker or cutter inquire whether the person asking for the work has the authority to commission it? If the diemaker or cutter did not ask and completed the work, he may have contributed to the infringement of that work along with the customer who commissioned the work. In copyright infringement cases, innocence is no defense.

If a diemaker is found liable for copyright infringement he could be subject to pay monetary damages to the copyright owner. And for willful infringement, the copyright owner could get an increased monetary damage amount plus attorneys’ fees and costs to bring the suit.

It is likely that every diemaker would refuse to make a custom die of Mickey Mouse, without permission from Disney, because Mickey is so recognizable. If, however, someone asks a diemaker to make a custom die of a flower, kitten or another design not readily recognizable, it does not mean someone does not own the copyright rights to those images as well. What’s more, it is unwise for a diemaker to assume the custom die customer has the authority to commission the work. But, how does a diemaker help protect himself from making a not so recognizable image, but no less protected than Mickey Mouse?

A diemaker can help keep out of harm’s way by taking certain precautionary measures when custom die work is requested. A shop should consider ways to diligently determine who has the authority to commission the work by creating forms the customer fills out that provides important information and helps protect the diemaker in the event infringement allegations are brought.

Due diligence requires that a diemaker make an earnest effort to determine if the custom die customer has the authority to commission the work. In some instances, a shop’s “diligent” efforts can be relatively easy. For example, it is not difficult to find a copyright notice on some submitted artwork, if one exists, to determine whether the customer is the same person whose name appears on the copyright notice. In that case, it seems likely the customer can commission the work.

Sometimes a diemaker’s diligence may require a bit more detective work than the example given above. One way to find out more information about the artwork submitted is to create a Custom Die Request form. The form would be filled out by the customer and should include questions that may give a diemaker clues as to the ownership rights in the artwork submitted. For example, ask the customer where they got the artwork, then provide a list from which they can choose the answer that best describes the source of the artwork such as, photocopied from a book, hand drawn by person requesting the custom die, hand drawn by another, from clip art, etc.

Another precautionary measure is to create another form-a Custom Die Release form. This form should include language that has the customer representing they are the copyright owner of the artwork and that the diemaker is relying on the customer's representation when making the custom die. Also, language could be included that says the customer would make good any loss or damage a diemaker had to pay if someone else was determined the copyright owner and won a contributory infringement action against the shop. It is unlikely a customer would refuse to sign such an agreement if they indeed owned rights in the artwork. On the other hand, those who do not have rights in the artwork may not want to sign. This may be a shop's first indication to not get involved in providing services for that customer.

Yet another, but no less important, precautionary measure a diemaker can take is to use good, common sense. He should not make custom dies of recognizable images without the proper permission. And, he should not assume that a less recognizable image can be made without first checking who may own the rights in the artwork. It's always best to assume someone owns the artwork; it is just a matter of finding out who it is. Hopefully, it is the customer standing in the die shop commissioning the work!

DISCLAIMER: This article addresses only some of the copyright issues of interest to the die industry. The writer’s recommendations are intended only as guidelines, and not as legal advice. For legal advise regarding these or any copyright issues, contact an attorney.