Claimant Ed Beard, Jr is an artist (and renaissance fair enthusiast) specializing in the depiction of wizards, fairies, and dragons. (His website has a Photoof him dressed up as Bob Ross with a fantastic touch…and these might be the best head shots I’ve ever seen.) Defendant Arik Helman makes his living designing boots and other items out of leather for his family business, Son of Sandlar. (Customs Curved toe with 9 Forrest buttons boot turns heads.) In 2008, these two gentlemen attended a renaissance fair in Florida where they discussed the difficulty of producing a quality boot button with a dragon design. About a week later, Beard shared his solution with Helman: a circular drawing of a dragon curled up in a ball. Helman, apparently, was delighted. Yet it wasn’t until 2019 – more than a decade later – that Helman and the other defendants began producing and selling start buttons based on Beard’s design. (You can see the final product in this Instagram Publish published by the defendants.)
The parties agreed that in 2008 Beard granted Helman an oral license to create start buttons based on Beard’s dragon design. They disagreed on the scope of this oral license, however. After Beard got wind that Helman was selling the knobs, the two dragon enthusiasts exchanged a flurry of emails and Facebook posts in which they exchanged proposals to resolve the dispute. When they failed to make peace – the breach of agreement seems to have been Helman’s (initial) reluctance to give Beard a free pair of boots – Beard obtained a copyright registration ( in July 2020) and sued for copyright infringement and breach of contract. “Do not come between the dragon and its wrath.” (King Lear, Act 1, Scene 1.)
The defendants sought summary judgment based on three theories.
First, the defendants argued that the emails and Facebook messages between the parties resulted in a binding settlement agreement that the court must enforce. The court dismissed the motion, finding that significant factual issues prevented it from definitively determining whether the parties had reached a settlement or had simply exchanged proposals and counter-proposals that were never accepted.
Second, the defendants asserted that Beard lacked standing to sue for infringement because he granted the defendants an exclusive copyright license to produce the buttons. Although Section 204(a) requires that any exclusive license be in writing, the court noted that the Third Circuit held that “it is perfectly reasonable to read Section 204(a) as permitting the performance of oral agreements through …, informal writings.” However, once again the court ruled that summary judgment was not appropriate as factual disputes existed as to whether Beard granted an oral exclusive license which was later confirmed in writing:
“These facts may be sufficient to establish a valid exclusive license for Helman to use the image, as the oral license was later confirmed in writing. However, there remains a genuine dispute on material fact as to whether the license was in Although Beard said he granted Helman “exclusivity over the use of the [Image] and my art on your start buttons”, it is not entirely clear that Beard – who is not a lawyer – meant to use the word “exclusive” in a legal sense”.
To finish, the defendants argued that Beard’s claims for statutory damages and attorneys’ fees for copyright infringement were barred because the alleged infringement began long before the effective date of the recording Beard’s copyright. Subject to a few exceptions, Section 412 prohibits recovering damages and attorneys’ fees for “any copyright infringement commenced after the work is first published and before the effective date of its registration.” . For purposes of Section 412, infringement “begins” when the first act in a series of acts constituting continuing infringement occurs. Here, it was undisputed that the defendants’ alleged acts of infringement began years before Beard obtained his registration.
However, an exception in § 412 allows the recovery of statutory damages and attorneys’ fees for pre-registration violations of the Visual Artists Rights Act (“VARA”), § 106A. Under VARA’s attribution law, an artist can (among other things) bring a lawsuit to claim authorship of a “work of visual art”. A “visual artwork“, is defined in the Copyright Act (in part) as “a painting, drawing, print or sculpture, existing in a single copy, in a limited edition of 200 copies or less, signed and numbered consecutively by the author, or, in the case of a sculpture, in several molded, carved or fabricated sculptures of 200 or less which are numbered consecutively by the author and bear the author’s signature or other identifying mark . » The legal definition expressly excludes, among others“any merchandising item or advertising, promotional, descriptive, covering or packaging material or container.”
Based on these definitions, the court concluded that Beard’s dragon image does not not qualify as a work of visual art:
“Although the image is a one-off production drawing and was signed by Beard, it was created specifically for use as a merchandising item – that item being start buttons. Because the image was designed specifically for commercial use, it cannot be considered a work of visual art. Furthermore, the alleged copyright infringement was committed in a commercial context and was used to produce articles of clothing; several courts have held that VARA does not grant claimant a right of action for unauthorized reproduction of their work on products that are excluded from VARA’s definition of a work of visual art.”
Accordingly, the court granted summary judgment to the defendants with respect to Beard’s claims for statutory damages and attorneys’ fees. (NOTE: It is not clear to me that Beard alleged violations of VARA in his complaint. Beard alleged that the defendants failed to acknowledge him as the artist who created the button design, and that this constituted a breach of the oral license agreement. However, this is not the same as asserting a claim under VARA.)
So this case continues. But with the possibility of attorney fees and statutory damages, I expect the parties to eventually settle (and maybe Beard will get a pair of fancy boots after all).
Beard versus Helman,No. 4:21-CV-00680, 2022 WL 987882 (MD Pa. 31 March 2022).
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