If you use an existing photo, image, coding or any other protected work and substantially modify it, this could be infringement. New works that are based upon a pre-existing work may be considered to be a “derivative work.” A derivative work is a work based upon important or substantial elements of an original pre-existing work and uses enough of the original work to be “substantially similar” to the earlier work. Unless the defense of fair use applies (discussed more in the next section), creating a derivative work is copyright infringement. The original copyright owner maintains all rights to any derivative works.
The copyright in a derivative work extends only to the material contributed by the author of the work and does not imply any exclusive right in the preexisting material. In Nimmer on Copyright, a well-respected legal treatise, it states:
“[T]he right to claim copyright in a non-infringing derivative work arises by operation of law, not through authority from the copyright owner of the underlying work.”
But, the bottom line is you should not try to modify and use some photo, logo, image, coding or any other protected work to create an, new work. For example, substantially modifying some existing source code and creating a derivative code based upon the original would likely be considered to be a derivative work. If, however, the resulting work turns the original work into something new or adds value, then it may be considered to be a “transformative work”. I really don’t need to expand upon this discussion other than to say website owners should not modify anything in the hopes they are creating a transformative work. It’s far too risky a proposition. Ideally, always create things from scratch, or purchase the rights to own or use a protected work.
While the law provides that the creator of the non-infringing derivative work may have the right to claim the copyright, parties may alter their rights to a derivative work by written agreement. If you plan on having any derivative works created based on anything you own, always have a written, thorough agreement transferring ownership of the rights in the derivative work.
The Fair Use Defense
Any unauthorized copying is an infringement unless the use falls within one of the very limited defenses, such as “fair use.” There is also the defenses of independent creation, first sale (owner of a lawfully made copy of a protected work has the right to sell, transfer or display his copy to the public) or expiration of the statute of limitations. However, use of another’s text, images or graphics on a commercial website is not likely to fall under one of these defenses.
The same rules apply to using text, graphics or images on your website. The guidelines the courts use to make a determination of what constitutes “fair use” are in the form of a four factor test.
Courts are still entitled to consider other factors as well, but the following four factors serve as the basic framework for the fair use defense:
- The purpose and character of your work – if your work transforms the original work into something new (i.e. a transformative work) it is much more likely to be considered fair use. But, if it is merely a derivative work, it will not be considered fair use. Using protected works for a commercial purpose does not disallow the fair use defense by itself;
- The nature of the original work – if the original work is very creative, it may be harder for you to use the fair use defense.
- The amount and importance of the material used – if you take a substantial amount of material from the copyrighted work, or if you take material that is very important to the copyrighted work, it will be harder for you to prove fair use. There is no fixed rule here as to what amount of use is fair, however.
- The effect on the market for or value of the original work – copying is more likely to be fair use if it does not interfere with the market (which generally doesn’t include parodies or negative reviews) or diminish the value of the original work.
Despite the fair use defense, the best way to obtain images or graphics for your website is to create them yourself or commission someone to create them. You can also purchase them and comply with any licensing requirements. It is difficult to determine in advance whether a given use is going to be held as “fair.” There are no concrete rules for determining fair use and case law has been inconsistent. So, you should always play it safe and avoid using protected third party works outright if you think it may be infringement. If you feel you must use some original image or graphic and can do so in a transformative way, absolutely seek the advice of an intellectual property attorney first.