IP Law Daily, COPYRIGHT—M.D. Fla.: Sometimes you really can judge a book by its cover, (Feb 12, 2024)

By Matthew Hersh, J.D.

The artworks of two book covers were substantially similar to one another on even a surface comparison.

The publisher of a book that compiled the works of a prominent fantasy book illustrator purloined two book covers the illustrator had created—even using one of those works on its own cover, the federal court for Tampa has held. The court, in granting summary judgment in favor of the heirs of the late illustrator, also found that the publisher of the compilation did not have a license to use the works and did not transform the works in a manner that would support a claim of fair use (Frazetta v. Vanguard Productions, LLC , February 9, 2024, Jung, W.).

The lawsuit is a dispute over the artwork for fantasy and science fiction novels. The late Frank Frazetta was a Brooklyn-born illustrator whose distinctive material was frequently used as book cover art for novels of the genre (a collection of his works can be found online here). Vanguard Publishing is a book publisher with a focus on artist biographies and reference books. David Spurlock, Vanguard’s founder, is an art historian, teacher, and professional artist. The publisher’s website touts its founder’s frequent appearances with various Frazetta family members at events around the country.

The relationship turned south, however, over the publisher’s use of two works by Frazetta known as Death Dealer II and Death Dealer V. The works were originally published as cover art for two of the books in the so-caller Death Dealer series, written by novelist James Silke. The heirs came to believe that the book publisher made use of the same works in a compilation book about Frazetta entitled Frazetta Book Cover Art. One of the book cover originals was used as part of the cover of the compilation book, the heirs believed, while the other was purloined for one of the inside pages. The heirs sued the publisher and its founder for copyright infringement. Both parties filed summary judgment motions, leading to this opinion.

Ownership of copyright. The court first found that the heirs owned a copyright in the works allegedly infringed. The issue involved two simple questions and one more complicated one. First, did the heirs individually own the copyright in the works or was the copyright owned by the heirs’ LLC, Frazetta Properties? The registration certificate mentioned only the latter, the court found—so only the LLC had standing to sue. Second, did it matter that the works were published nearly 20 years after their first publication? Not at all, the court found: “A copyright may be registered at any time during its lifespan.”

The third question required more analysis, but ultimately came out the same way. Frazetta created original works and then adapted them for the covers of the two Death Dealer books. But the LLC owned registered copyrights only in the original works—not the later book cover adaptations. Did that prevent them from suing? It did not, the court found. The heirs accused the publisher of purloining elements of the book covers that were present in the original, the court noted. “When a copyright owner produces an unregistered derivative and that derivative is copied,” the court observed, “the owner can bring an infringement claim based on the preexisting material that came from the earlier, registered work.” This defense would not keep the claim from going forward.

License agreement. The court also rejected the publisher’s argument that it had a license to publish the works. The publisher relied on a 2010 agreement that gave it the right to publish the original book covers in a book entitled The Definitive Frazetta Reference. Did that license also cover its later book entitled Frazetta Book Cover Art? It did not, the court found. The refence book was first published in 2008, while the cover art book was not put out until 2022, the court noted. The books also had different titles and covered different subject matters. “The Definitive Frazetta Reference takes a broad look at Mr. Frazetta’s work,” the court noted, “while Frazetta Book Cover Art focuses (unsurprisingly) on book covers.” Nor would it matter, the court noted, if the second book was a derivative of the first. “License to use an original work does not, on its own, confer license to produce derivatives of that work,” the court noted. This defense, too, would not stop the lawsuit.

Direct and secondary infringement. The court rendered a mixed judgment on the copyright claims. The secondary infringement claim would fail, the court noted, because there was no evidence to support it. The heirs claimed that they were “continuing to investigate the possible involvement of unknown third parties, including illustrators, publishers, printers, co-writers and ghostwriters.” But discovery had not turned up any such involvement, the court noted. This claim would therefore fail.

But the heirs would have more luck on their direct copyright infringement claim. In order to show copying, they would have to demonstrate that the Death Dealer artworks and the versions used in the compilation book were substantially similar—or in other words, that “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Here the answer to this question was apparent on the face of the works. “An average lay person, comparing the images side-by-side,” the court noted, “could not help but find the book cover art to be an appropriation of the Death Dealer II and V original artworks.” There was no need for a jury to even hear this claim.

Fair use. That left only the question of fair use—but that too would not help the publisher. Most importantly, the court noted, the publisher made no transformative use of the two earlier works. For one thing, the court noted, it did not matter that the publisher labeled its compilation book a biography. Educational purpose is not dispositive and must be weighed alongside other characteristics, the court noted—and the book at issue in any event “relay[ed] little in the way of education.” Nor could the publishers claim they transformed the originals by integrating them with pages of text, graphics, commentary or like. To be sure, the book at issue did combine the original images with some text—but that text was merely “short captions done in small, non-obtrusive font. The images therefore weren’t used to enhance the text; rather, the court noted, they were “the sole focus of each page.” There was no transformative use here.

With transformative use out of the way, the rest of the fair use factors also did not help the publisher. The nature of the work weighed in favor of the heirs because appropriated works were entitled to thick copyright protection as works of art. The works made up only a small part of the book at issue, but all that mattered how much of the original was taken—and here it was the entire portion. As to the effect on the market for the originals, the court found, this also cut for the heirs. The publisher put out a coffee table book in which the original works took up almost an entire page each, the court noted. The heirs, meanwhile, were at the same time marketing a coffee table book of their own with the same images. The publisher’s use of the works therefore “supplant[ed] the purposes of the original.” There was no fair use here.

The Case is No. 8:22-cv-00581-WFJ-AEP.

Attorneys: Jack William Merritt (Merritt Law, PA) for Frazetta Properties, LLC. Patricia Leigh McMillan (Leigh McMillan Williams) for Vanguard Productions, LLC.

Companies: Frazetta Properties, LLC; Vanguard Productions, LLC

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