In the new Digital Age, we have at our disposal a multitude of communication tools and ways of sharing contents that can make us forget the horizon of legality in the use of else’s works. Everything is at hand, and it is very easy to fall into the temptation of taking advantage of others’ creations without even considering the consequences, sometimes by mistake and ignorance. While it is true that the concepts of copyright and licenses of use are widespread today, what is not so clear to many is the scope of permitted uses: where is the line between the violation of a right and the lawful use?

These issues tend to be increasingly complicated by the appearance of modern communication systems. The new content management platforms, which are dependent on a greater technological complexity, often unknown to the user, may hide uses that are not entirely in line with the standard1. But returning to the uses that depend directly on the final recipient; it is convenient to know where the limit of what is allowed starts. The case of emoticons is a good example because all communication companies have included these digital elements to enrich their libraries of symbols. The fact that we can incorporate them into our messages without extra payments (beyond the first download of an app, as the case may be), helps to spread the feeling that these little icons are already part of the public domain. Nothing further from the truth.

This leads us to reflect again on the scope of copyright in the Digital Age, and especially in the case of these elements that we tend to use cheerfully without much concern, and whose author, in most cases, is completely unknown. However, it should be pointed out in these cases that the authorship is usually embedded into the own company that makes the emoticons available to its users2, and that the tacit use licenses apply to the user as such, who previously has had to accept (though in most cases without reading the fine print) the conditions of use of that communication service.

Exhibition ' Emoji Art & Design Show' 2013 in NY, via

Exhibition ‘Emoji Art & Design Show’ 2013 in NY, via

But let us consider a particular case to understand the difficulties of this matter, something that we will analyse from the US legislation, as a paradigm of the common law system, and the European one, with special attention to the Spanish law.

Suppose we want to use a particular emoji to include it in the business name of our company. Almost no one today ignores that the use of third-party works for commercial purposes is an infringement of copyright, and that such use would only be legitimate if the author had expressly consented it, according to his right of reproduction or of creating derivative works. It would be difficult to imagine a situation in which such use, without prior consent, could be considered lawful, either in the American system or in the European system.

The owner of the company, aware of this obstacle, could try to create his own emoticon, changing the design in some details, but still being identifiable with the model he intends to imitate. In this case, he could try to shelter in not having used the original as such, but a work of his creation. Here we come across another fundamental problem that is the basis of intellectual property law. Copyright is a mechanism of defence and promotion of creativity and originality.

Copyrights are a mechanism of defence
and promotion of creativity and originality.

As a protection system, it tries to offer incentives for creators to see their works protected, and this stimulates the production of new creations; and at the same time, it tries to avoid opportunists taking advantage of others’ works when intellectual merit does not belong to them. Then, in the case of a redesigned emoticon inspired by a previous one, it is evident that somebody wants to take advantage of the identity of the original work, and this new design would lack the necessary “creativity and originality” required to be protected.

The best thing to do here by the owner of the company that wants to include an emoticon into his logo or trade name is to ask permission from the author and pay the rights of use that are appropriate, in fair payment to his creation work.

Reinterpretation of 'The Anatomy Lesson of Dr. Nicolaes Tulp', by Rembrandt, via

Reinterpretation of ‘The Anatomy Lesson of Dr. Nicolaes Tulp’, by Rembrandt, via

Things, however, are not so clear when the use of a third-party work is integrated as part of a new creation. In order to stick to a real and frequent example (there is a whole stream of creators, unconditional fans of emoticons and artistic fusion, such as the examples we have brought here), imagine that a contemporary artist includes several emoticons in an audiovisual composition, or incorporates them on a canvas, with other elements, in a series of pieces that reflect on the new forms of communication in the 21st century. The use of emojis in this context is equally commercial because the artist will put on sale his pieces. However, in these cases, it seems to appear the note of creativity necessary for the author of these productions is protected. What happens then with the creators of the emoticons used without permission? Here is where we have to analyse the scope and nature of that use.

European and American law differ in this respect. The first one works through a list system that practically collects all the situations, in a detailed way, in which the use of an else’s work is lawful even without the prior consent of the author. Out of these cases, the else’s work could only be used with the authorization of the creator. The Berne Convention, whose latest version is of 1979, refers to the legislation of the member states to determine what those cases are.

Spanish law (LPI) includes these limits in Chapter II of the Title III (Articles 31 to 40bis, RD Legislativo 1/1996). To understand the reasons for these permits, we must understand the primarily informative nature of the limits detailed: thus, uses for teaching, academic, informational and diffusion purposes are usually allowed. What happens to our artist? The situation is not clear, and we will have to analyse the issue to see if there is plagiarism or damage to the author of the emoticon, but most likely it could fit in Article 39 LPI on parody 3. Parody is a type of transformation that does not require prior consent, provided that the parodied work has been already disclosed,Las Meninas de Pablo Picasso doesn’t imply a risk of confusion with the original, nor inflicts damage to the original work or its author. Parody is a way of commenting and showing opinion, which in some cases may require the use of third-party works so that the intended effect is fully achieved. It is not difficult to see that a contemporary work of a critical nature chooses to incorporate emoticons as part of the visual expression of its discourse and better connect with the public. This has been a long-used resource throughout the history of art, and as an example, we can put the “Meninas” reinterpreted by Picasso, although in this case Velázquez’s work already belonged to the public domain.

The situation under US law is quite different. The Copyright Act of 1976 does not follow the European system of offering a list of exceptions. On the contrary, it follows the jurisprudential doctrines developed by the courts in solving each case, and among them, it highlights, so far as the Act has included it by amendment (17 U.S. Code §107), the fair use doctrine. According to this doctrine, certain uses of else’s works may be considered lawful provided that their incorporation pursues purposes such as criticising, commenting, reporting, teaching or research. So far the approach is not essentially different from the limits established in the European legislation. The difference is that, by not following a system of restricted list, the fair use doctrine can adapt to any situation without being explicitly included in the norm. The important thing is to be aware of the factors that integrate this theory and to weigh its importance and value in each particular case. This doctrine focuses on four elements: 1) the purpose of that use, 2) its nature, 3) the quantity and quality of the original work used, and 4) the effects on the potential market of the work used. However, it has a small drawback, which is that the judgements are not unanimous, and there is a significant factor of appreciation in the case at issue.

Thinking about our example of the artist using emoticons, a court would very likely understand that the incorporation of these symbols into the artwork has a critical or commentary purpose of important social content, and that perhaps that goal would not be reached without using these emojis, or at least, would not be achieved with the same intensity4. It is important that the value added to the incorporated work is different from the original, that is, it requires a truly transformative and innovative character. This is the communicative and critical value of contemporary art, although there are always cases that move on the limit5. The conclusion is that the more transformative and more creative the work is, the more susceptible it will be to fit into the doctrine and to understand that the use of the else’s work is legitimate.

To the left, image from gilf!’s artworks, by The Dusty Rebel. To the right, imagen from the accessories online shop

The use of the else’s works is in vogue. Appropriations often occur because the dissemination given to the artwork is confused with the will of the author of surrendering their rights or, even, it is taken for granted that these artists lack rights because their works are at the limit of legality. This is especially frequent in the case of street art (art or vandalism?). As an example we can mention the recent case of the graffiti artist Secret Snow, who has sued McDonald’s for using his works to decorate the walls of its restaurants; or the incorporation of Joseph Tierney’s work to the fashionable designs by Moschino, or even the commercial use of the work of the artist gilf! to put a nice background to the catalogues of clothing and accessories of some brands, not mentioning the author or asking for permission. Would it have been just as shocking, from a commercial marketing standpoint, to have taken the photo elsewhere? Why can not the creator share the profits obtained by the companies that take advantage of his work?

The panorama of cases looks promising and more when we deal with works whose protection is still doubtful for some. We will remain attentive.


1 As an example we can mention the copies of audiovisual works made in virtual clouds that generate a temporary file to be issued to the final user, who has previously requested them. They are copies not accessible to the public, but integrated into pay-view systems, that is, on-demand services that broadcast an audiovisual work to a specific user who previously paid the mandatory license to access those contents, but this system requires the existence of a previous copy when sometimes the servers of these products only have broadcast licenses, not for copying. In what situation is this virtual copy, even of a temporary nature? The Cablevision case, in 2008, is a good example of this. – Back to note 1

2 We think of the case of designers hired by a company. The economic exploitation of the intellectual productions of that designer belongs to the company. This is because it is understood that the worker has taken advantage of the facilities, resources and means of the company to carry out his creation, and that otherwise, would not have done it. In US this is known as the Work for hire doctrine. – Back to note 2

3 Parody is also a recurring figure in the American system, though not by itself, but because its purpose often fits in well with the fair use doctrine. – Back to note 3

4 See the famous case Campbell v. Acuff-Rose Music, in 1994, a paradigmatic decision in the treatment of the fair use doctrine, where the musical group 2 Live Crew used a substantial and recognisable part of the “Pretty woman” work of Roy Obirson. This is a case of parody that was finally considered a lawful use. The same happened with Mattel, Inc. v. Walking Mountain Prods., 2001, about the work of the artist Thomas Forsythe who used Barbie dolls to make photographs of critical content on the position of women in society, and also as a form of parody. On the opposite side, the alleged parody of the artist Koon in the case Rogers v. Koons didn’t succeed. – Back to note 4

5 In the case Patrick Cariou v. Richard Prince, of 2013, Prince used the photographs of Cariou, manipulating them and transforming them considerably, nevertheless, the court understood that in all the images used could not appreciate that value of transformation and, therefore, were not protected by the doctrine. – Back to note 5

Author: Marta Suárez-Mansilla

Lawyer specialised in cultural law. With extensive experience in the field of Contemporary Art and Project Management, my activity now focuses on approaching the legal issues surrounding this field of work.

© Marta Suárez-Mansilla
ArtWorldLaw Bulletin. Chronicles of Themis & Athenea. nº 2. MADRID. December 2016.

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