As graphic designers, we deal in concepts and ideas. But, we also deal in intellectual property. Intellectual property (IP) is the area of law that addresses intangibles such as copyrights, trademarks and patents. For designers and other visual artists it concerns protecting the work we do, for both ourselves and, often, our clients. And herein lies the problem. Most designers don’t think about rights, unless they’re a Landor or some other huge design firm. That is to say, they don’t think about it … until something comes back and bites them in the you know where.
Considering usage rights, copyright, trademarks and other IP rights should be part of the overall design process. Giving heed to it in the beginning helps to ensure it won’t be a headache at the end or beyond.
First off, let’s clarify one thing. I’m not an attorney. Not a Matlock or even a cast member of LA Law. I’m a writer. I research this stuff and then present it to you. My advice, for what it’s worth, is to get with your attorney (and you should have one) to get the scoop on how IP rights affect you, your work and the work you do for your clients. You should have an attorney for business stuff, but also an IP attorney for the work stuff.
With that said, let’s fly with the legal eagles and take some of the mystery out of all this rights business.
Let’s Talk Rights
Here in the U.S., the Constitution and Bill of Rights give citizens a bunch of rights. As a visual artist you also have a bunch of rights. Let’s get some definitions, courtesy of Dictionary.com.
The exclusive right to make copies, license, and otherwise exploit a literary, musical, or artistic work, whether printed, audio, video, etc.: works granted such rights by law on or after January 1, 1978, are protected for the lifetime of the author or creator and for a period of 50 years after his or her death.
• Service and Trademarks
1. Any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A trademark is a proprietary term that is usually registered with the Patent and Trademark Office to assure its exclusive use by its owner.
2. A distinctive mark or feature particularly characteristic of or identified with a person or thing.
1. The exclusive right granted by a government to an inventor to manufacture, use, or sell an invention for a certain number of years.
2. An invention or process protected by this right.
3. An official document conferring such a right; letters patent.
In addition to patents, there are also registered and unregistered design rights, which are primarily for industrial design. However, for purpose of this article, we’ll focus on copyright and service/trademarks as they relate to graphic design. The follow up article will focus on infringements and how to handle them.
So, now that you know the skinny on the definitions, let’s delve a little deeper.
Copyright is a collection of exclusive rights granted to the creator of an original work that includes the right to copy, distribute, and adapt the work. These works, however, must be fixed in a tangible medium. For example, a choreographic work might be copyrightable if it’s recorded, but not if it only exists in the mind of a choreographer.
For a designer, that can mean their concept or idea for a logo or collateral material can’t be copyrighted, but may be when it’s printed as hard copies for a presentation or printed. Ideas are not copyrightable, but the tangible and fixed expression of an idea is.
Think of copyright as a pie that you can slice up several different ways. Copyright can be licensed in either an exclusive or nonexclusive transfer. Exclusive transfers include the following rights:
• The right to copy or reproduce the work in any format, whether digital or analog
• The right to make derivative works (all kinds of adaptations of the work, including translations, revisions, film versions of books, etc.)
• The right to control distribution of new copies of the work
• The right to perform the work publicly
• The right to display the work publicly
When licensing nonexclusive rights, the following distinctions can be made:
• Duration of use
• Geographical area in which use is permitted
• The medium in which use is permitted
• The language in which the use is permitted
• Electronic rights may be specifically granted or withheld
Copyright infringement is mostly a civil issue. In other words, if someone infringes on or violates your copyright, you can sue them. However, there are instances where copyright infringement can be deemed a criminal infringement.
Beginning with the Berne Convention in 1886, efforts have been made to harmonize copyright laws on the international level. However, copyrights remain largely a territorial protection. Each country’s laws apply within its borders, but many seek to allow some flexibility to address minimum international standards.
It’s also important to note that copyright is vested with the creator upon completion of the work. It doesn’t need to be registered with the Copyright Office, but it’s a good idea to do so. Judgment awards tend to be higher when the work is formally registered. Graphic designers would normally use a Form VA. Filing can be done online at the Copyright Office website. The current fee is $35.00 U.S. Plus, you can group a variety of works together with one form and one fee. For example, “The Collective Logo Designs of Joe Designer, 2012.”
A trademark is typically a word or phrase, design, logo, symbol or image. They can also be a combination of elements or even a sound or smell. Services often use the term, servicemark. They came about as a method for consumers to identify a particular product or service as coming from a unique source or designated for a specific market. Trademarks also protect the owning entity from its competitors. Trademarks can be registered or unregistered. The former uses the familiar ® and the latter uses ™. Servicemarks use SM.
The owner of a registered trademark has the right to enter into legal proceedings for infringement to prevent unauthorized use. Registration is not required, though. The owner of a common law trademark may also file suit, but there’s a caveat. Unregistered marks may be protected only within the geographical area where it has been used or in geographical areas into which it may be reasonably expected to expand.
Indulge me while I tell you a story. A while back, one of my clients had a branded plastics product that was very well known within their industry. It was so well known that it became somewhat generic. Sort of a Jello® or Kleenex® in their industry. But, few knew the company by its corporate name. So, the president decided to change the name of the company to the product name. He asked me to design a logo for them.
The company had a past as a corporate spin-off and being bought and sold a few times. While I was doing the background research I found that the trademark for the product name was owned by another company, a huge company that had owned my client’s company years earlier. So, I called the president. “Are you sure you’re clear to use the name? It’s owned by XYZ Corp.” I asked. He replied, “Yes, we’re clear. We licensed the name and all is well.” So, off I went to design the mark for a hefty fee.
To make a very long and rather ugly story short, the big company wouldn’t let them use the name as the company name. Yes, I got paid, but they were out several thousand dollars for a mark they couldn’t use. The scary thing is that this kind of stuff happens all the time. It pays to do the research and legal work.
An excellent resource for more information about trademarks is Thomson Compumark. From their site: “Thomson CompuMark, a business unit of Thomson Reuters, provides the industry’s broadest range of trademark research and brand protection solutions. We enable trademark and brand professionals worldwide to launch, expand and protect strong brands through unmatched global content, expert analysis and tools, and best-in-class service.”
Get It In Writing
Beyond all this, who owns what can be tricky when it comes to design projects. Often, there are several parties involved, each contributing their bits. These include the designer and client, of course, but also a writer, photographer, illustrator, programmer, etc. Each has a stake in the finished work. Good rights negotiations at the beginning of the project can save a myriad of headaches down the road.
This is yet another reason why clear contracts are paramount. In most cases, a logo for example, the designer will transfer all rights to the client upon payment of all design fees. But, that’s not the only way the rights pie can be sliced.
The designer might opt to transfer all rights to the selected design upon payment, but keep the rights to unused designs. Those unused ideas might be adapted for another client’s project later on. Or, depending on the client’s situation, it might make sense to arrange a licensing arrangement where the designer is paid a certain amount at various intervals during the life of the design. You get the idea.
When it comes to other project partners, it’s just as important to negotiate the rights slice with them. For example, they may want an additional fee when a brochure is reprinted or has a wider distribution area. I worked with an illustrator on a series of posters. We negotiated his fee for the poster illustrations, but the client also wanted the original art to hang in their office. He received an additional fee for that, but he kept ownership of the physical art. So, the client ended up “renting” the art, so to speak. At one point the illustrator wanted the art back for a short time to put in a show.
After the show, the art was returned to the client. It all worked out well because we had clear negotiations, written agreements and everybody knew what to expect. I got the illustrations to use in my poster designs. The client got the posters and some gorgeous art to adorn their conference room. The illustrator got paid a few times and kept ownership of his physical work. Everybody did the happy dance.
A great place to get more information about copyright issues specifically for creatives is The Copyright Alliance. As in music, it pays to know your rights and how they can best serve you.
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