NEW YORK – When the famous photographer Bert Stern went to the Bel-Air Hotel in 1962 to take a series of pictures of Marilyn Monroe, he likely never anticipated that 56 years later, his widow Shannah Laumeister Stern would be in court arguing over who owns the copyright to those photos.
Last week, however, in a ruling which underlines some possibly underappreciated aspects of intellectual property law, U.S. District Judge Paul Engelmayer found that Stern (and by extension, his “successors in interest”) was the rightful owner of the copyright to the photos, which have come to be known as the “Last Sitting” of Marilyn Monroe.
Engelmayer’s ruling paves the way for a trial which will address whether Lisa and Lynette Lavender, twin sisters who once served as Stern’s assistants, infringed upon the copyright when they sold modified reproductions of them through sites like eBay.
While the parties cross-moved for summary judgment in whole on the case, Engelmayer found that with respect to some of the claims involved in the case, “material disputes of fact preclude summary judgment on most of these claims.”
The Lavenders claimed Stern never owned the rights to the photos, asserting the images were “works for hire” whose rights are owned by Condé Nast, the publisher of Vogue magazine, which arranged the shoot and published the photos shortly after Monroe’s death. (Monroe died on August 5, 1962, Vogue published the images several weeks later, on September 1.)
The question of who owned the copyright was the first major question to be addressed. The second, far more complex question is assuming Stern did own the copyright, did the Lavenders infringe on those rights, or did they receive permission from Stern to reproduce the images? The Lavenders claim Stern gave them such permission shortly before his death, while the plaintiffs dispute the idea.
In his ruling, Engelmayer resolved the first question, holding that “Stern was – and that his successors in interest are – the rightful owner(s) of the copyright to the photographs.”
“As to this issue, the Lavenders have not adduced evidence sufficient to create a genuine dispute of material fact,” Engelmayer wrote in his decision.
For those of us who are not parties to the case, the primary lesson here stems from what the Lavenders claimed but could not prove at trial: The notion Stern shot the photos as a “work for hire” under contract to Condé Nast.
According to the facts recited in Engelmayer’s order, it seems clear Stern retained the rights to the images. In many other similar cases, however, the question of who owns the rights to a given work is determined by what isn’t found in the contract – namely, a clause which specifies the work is being done for hire, and that the rights are held by the employer, not the contractor performing the work.
Of course, as many legal experts have noted, just because an employer calls something a work for hire doesn’t automatically make it so. Among other things, works for hire must satisfy the statutory definition of the term, which can be found under 17 U.S.C. § 101.
Some people seem to read only the first line of the above definition – “a work prepared by an employee within the scope of his or her employment” – without reading past the “or” which terminates the line.
Works created by independent contractors (which is what Stern was when he took the photos in question) the doctrine only applies to specific kinds of works, including “a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas.”
Even if the type of work in question is one of the forms listed above, the definition also specifies such works qualify as works for hire “if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”
What makes this case newsworthy in the minds of the media and broader public, of course, is the fact the pictures at issue depict Marilyn Monroe, one of the best-known sex symbols in human history, let alone American history.
The legal issues are what should stand out to creators of adult entertainment works, however, even if they’re mundane by comparison to the back story. After all, the work for hire question involves something which happens every day in the adult entertainment industry: Independent photographers (and videographers) shooting content on behalf of third parties like studios, website operators and other producers.
If your company distributes content shot by independent contractors and you want your company to be the rightsholder to the content, it’s essential your agreements and contracts are properly structured to assure you retain the rights.
Do yourself a favor and don’t “wing it” in this area. If you don’t already employ an attorney who is well versed in intellectual property law, find one who is and ask her or him to review your existing contracts and agreements – and to write new ones, if they deem it necessary.