Copyright is the exclusive right to control reproduction and commercial exploitation of your artwork. Except under certain circumstances (see “work made for hire” below), you own the copyright in your work at the moment you create it in a “fixed” form of “expression.” A fixed form of expression is any tangible medium that can be perceived by humans, including traditional forms such as paintings, sculptures, writings, and new forms that require a machine to perceive (e.g., gif files, CD’s, websites).

…unless your work is “made for hire”

Generally, the person who creates a work is considered its “author” and automatically owns copyright in that work under copyright law. However, there is a limited exception under the “work made for hire” doctrine: if you are an employee, your employer is considered the author and automatic copyright owner of any work you create within the scope of your employment. In most cases, this doctrine applies only to full-time employees. (You may have seen “work made for hire” language in independent contractor agreements for graphic artists. Such provisions are left over from years ago, when the legal standards for establishing work made for hire were less stringent. They are not appropriate today. Under current law, work by independent contractors may be deemed work for hire only under very limited circumstances, essentially, for contributions to films or encyclopedias.)

Granting rights in your copyright

Copyright ownership stays with the author unless and until the author transfers that ownership to another person or entity in writing. Copyright can also be shared, however. Copyright is really a “bundle” of several different exclusive rights. For graphic artists, the relevant exclusive rights comprising copyright ownership are the rights to reproduce, display, and make adaptations (“derivative works”) based on your work. Each exclusive right in the bundle can be owned separately. For example, you can grant a newspaper the exclusive right to reproduce your comic strip, and you can keep the right to adapt the strip for an animated film. Moreover, any subset of the bundled rights can be licensed on a nonexclusive basis. For example, you can grant a publisher the right to reproduce your painting as a book cover, and you can keep the right to reproduce it as a giclée print.

When you perform graphic art services for a client, the client is paying for some sort of right to exploit the end product, and thus is entitled to some sort of license or grant under your copyright. Identifying the scope of that license or grant can be the most important part of your agreement with your client, and unfortunately, it is often the most difficult to negotiate. (For the purposes of this discussion, we will not get into specifics of contract language or negotiations. I will be available for specific questions and discussions on those problems in future Legalities columns).

When should a client own your copyright?

Frequently, your client will want to own your copyright, which means that the entire bundle of rights is transferred to the client, and you no longer have the right to control how often, or in what manner, the work is used. Full assignment is not always necessary or appropriate. Generally, it is better for the scope of the license to closely track the client’s intended use of your work.

For example, suppose you are hired to do a spot illustration intended to accompany an article in a weekly magazine. Your fee is the standard, reasonable amount for that one time use. However, if your contract transfers copyright to the magazine, the magazine can use your illustration again, for example, it might adapt the illustration to create a logo for an ongoing weekly column, without any further compensation to you.

On the other hand, if your contract provides for a one-time license to reproduce the illustration, the magazine must seek your permission, in the form of another license with another fee, before it can legally adapt your illustration for the column logo. This is true even if you grant the magazine an exclusive license to reproduce the illustration, that is, if you agree not to allow any other entity to publish the illustration. The magazine’s rights would still be limited to the one-time use identified in your contract.

Another important reason to retain copyright is to ensure that you have the right to create similar works for other clients. The legal standard for copyright infringement is “substantially similar expression.” Under that standard, works that consumers would recognize as being based on the spot illustration would be infringements unless they are authorized by the copyright owner. When the copyright owner is the magazine, rather than yourself, if you create similar illustrations for another client, they could be considered infringements. In a recent case, a jury found such infringement with respect to two series of greeting cards. In that case, the same artists designed both sets of cards. They transferred their copyrights to the respective greeting card companies. The jury found that the second series of cards were substantially similar to the first set. Thus, the artists were held to have infringed their own work when they created the second series of cards for the defendant card company.

Obviously, for some types of work it is appropriate that the client own your entire copyright. Corporate identity packages, logos, web sites, and any other works that are intended to have an ongoing, exclusive marketing presence for your client should become that client’s property. It would not be appropriate for you to re-license such works to other clients, and other clients won’t want them anyway, since each corporate image needs to be unique. In that case, you should ensure that you have the continuing right to display and reproduce the work in your print and online portfolios; otherwise, you no longer need to worry about copyright.

Infringement happens

Copyright infringement happens whenever someone copies or commercially exploits a work without the copyright owners’ permission. Unfortunately, this is a common occurrence in the graphic arts. It can happen when your licensee re-uses your work beyond the scope of the license, as in the example above where the magazine adapts the illustration for a column logo. It can happen when someone downloads your work from the web, manipulates it electronically to produce an altered image, and resells that image for a magazine cover. It can happen when an ad agency makes copies of your portfolio, then uses one of your works in a presentation layout for a client (unfortunately, this is quite common, and even more egregious, sometimes another illustrator is hired to create the final art). It can happen when an illustrator copies the subject and composition of a photograph, when one illustrator copies the unique way another illustrator draws figures, or when one ad campaign replicates the design of another. All of these are real examples.

Register your copyrights!

For those copyrights you keep, it is very important to obtain federal copyright registration. Even though you have copyright ownership as soon as you create your work, under U.S. law you have no rights to enforce your copyright until you register. Moreover, generally you must have filed for copyright registration BEFORE the infringement occurs in order to have the full scope of copyright protection (the exception is if you filed within three months of the first publication of your work; in that case, you have full protection even if the infringement occurred earlier).

Full protection for such early registration includes two important remedies: the right to recover your attorneys’ fees when you win the lawsuit, and the right to an award of statutory damages. Statutory damages means that the court can determine an amount of money to be awarded even if you cannot prove a specific monetary loss caused by the infringement. (Currently, the law sets a maximum of $150,000 in statutory damages for willful infringement.)

Many artists know that they cannot afford litigation. Thus, they believe the remedies provided by early registration are not relevant. However, in the vast majority of cases, it is the possibility of a lawsuit, rather than actual litigation, that gives you the bargaining power to stop an infringement, and often, to collect some money in settlement of your claim. When defendants receive a letter raising an infringement claim, their first step is to determine whether you have a copyright registration that predates the infringement. If you do, they know that you are entitled to sue them for statutory damages, and moreover, that you can recover your attorneys fees. This means that (1) you are more likely economically to be able to sue; and (2) that they are more likely to be liable for a sizable sum (e.g., $150,000 in statutory damages plus another $100,000 or so in attorneys’ fees if the case is fully litigated). Such a likelihood enhances their risk of monetary loss and thus encourages them to settle.

On the other hand, if they learn that you don’t have an early registration, most defendants assume that you will not be able to sue them, and they will feel less inclined to negotiate in good faith for a reasonable settlement. In the worst cases, I have seen infringers simply ignore claims altogether, and continue infringing, because they assume that individual artists cannot afford to enforce their unregistered rights.

There is no substitute for early registration. Unfortunately, during my practice I’ve heard several incorrect theories about copyright protection. Some of these are leftover from earlier versions of copyright law that are no longer applicable except to older works. Here are some examples:

Copyright notice : Under the old copyright law, a copyright notice was required in order to secure your copyright once your work was published. This is no longer true. However, including a copyright notice on your work is a very good idea. Copyright notice lets others know that your work is copyrighted, and it prevents an infringer from arguing that he believed the work was in the public domain. It may also be the best way to discourage unauthorized copying in the first place. Nevertheless, copyright notice does not enable you to sue for infringement, nor entitle you to the full protections of early registration. The standard form for a copyright notice is “ © 2010 [your name]. All Rights Reserved.”

Publication : Publication, which in copyright law means not only having your work printed, but any offering of copies of the work to the public, does not change copyright status. As noted above, you own copyright from the time of creation. (Under the old law, you lost copyright if you published your work without copyright notice, but that no longer applies.) When your work is published, the likelihood that it will be infringed increases, but you have no extra protection against infringement unless you register.

Mailing a copy of your work to yourself : This is a popular but legally untenable theory of copyright protection. It does not affect your copyright. The only thing this practice does is prove the date you mailed the envelope.

Long-term public access : Some artists believe that the longer their work has been available to the public, the stronger its copyright protection. Others think that once their work has been available for a long time, it loses protection. Neither theory is correct. Public availability of your work does not affect your copyright. Generally, your copyright lasts for your lifetime plus 70 years, whether or not it has been published or registered. (Under the old law, copyright terms began upon publication, and sometimes had to be renewed, but this is no longer true.) Even if your work has been published for 20 years, you cannot sue for infringement unless you have a registration.

Registration by your client : Many artists believe that their client’s registration is sufficient to protect their own copyright. This is the hardest misconception to deal with because until recently, it was considered correct by most copyright lawyers. The copyright statute requires only that “a registration” be made for the work in order to provide full protection. It does not say that the registration must be made by the author. The publisher’s copyright registration for a collective work, such as the weekly magazine in which your spot illustration was published, should protect all works included in that issue, regardless of whether you have retained some copyright in your illustration. However, recently several courts have held that a publisher’s copyright registration protects only those contributions to the magazine for which it owns the entire bundle of copyrights. In the most egregious case so far, the court held that a magazine’s registration does not protect a spot illustration even where the magazine has an exclusive license to publish it. The plaintiff’s case was thrown out of court because she did not have her own registration.

Most courts consider the registration prerequisite satisfied once you have filed your copyright application, but increasingly, other courts are requiring that you actually have the registration certificate in hand before you can bring suit. The copyright office is a typical government bureaucracy with a large backlog. It can sometimes take a year from the date you file for you to receive the registration certificate.

Now more than ever it is very important to file for your own copyright registration, and to do so early. You should register any work that will be seen by the public or potential clients, including your portfolio. Especially now that many artists are displaying their work online, unauthorized copying is temptingly easy, and infringements are common. Early registration is the best proactive step you can take to ensure that you will have the full power to react in the unfortunate event that your work is infringed.

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You are invited to submit questions for upcoming Legalities columns. Please send your questions to .

Legalities is a service mark of Linda Joy Kattwinkel. © 2003 Linda Joy Kattwinkel. All Rights Reserved. The information in this article is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists with the firm Owen, Wickersham and Erickson in San Francisco. She can be reached at 415-882-3200 or .

An archive of previous Legalities articles is available at Linda Joy’s website.

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Submit your entries by this date – MARCH 15, 2010
Awards winners will be notified in early April
Awards Luncheon – MAY 6, 12:00–2pm

TAKE THE QUANTUM LEAP, ENTER NOW!
You are invited to enter your best work in the 2010 Showcase of Print/Design Excellence. This is your opportunity to gain recognition for the work that you produce. The benefits of participation include showcasing your effort to your customers and the graphic arts community, and receiving recognition for your dedication to design and the quality of print production.

Best of Show, Grand Award, and Best of Category winners will be photographed and become part of the Showcase Awards Luncheon to be held during the PINCShow on May 6 plus the 2011 PINC Print Buyers Guide which goes out to over 7,000 companies and individuals. The Best of Show winner will also receive a full page ad in the 2011 Print Buyers Guide.

WHO CAN ENTER?
Any individual or company involved in the printing industry or involved in the production of an entry within the PINC coverage areas may enter. All entries must have been produced within the PINC coverage area (south to San Luis Obispo and north to the Oregon border, and east to Reno).

JUDGING OF ENTRIES
Judging will be done by a panel of printing and design experts. All the winners will be notified via letter in April, approximately one month prior to the Showcase Awards Luncheon on Thursday, May 6, 2010.

AWARDS
Each piece will be judged on its own merit based on specific criteria for printing, finishing or design. The scores given to an entry will be averaged for a final score. There will be Gold, Silver, and Bronze awards. Winners (individual or company entering the piece) will be awarded certificates as recognition for their achievement. All Gold award winners in the Print and Finishing categories will automatically be sent on to the Printing Industries of America Premier Print Awards as well as the National Association of Litho Clubs Impression Awards at no additional cost. Design entries will also go on to the Impression Awards printing competition.

DATE OF PRODUCTION

• Entries must have been produced between March 2009 and February 28, 2010.
• Avoid paperwork – enter online @ www.pinc.org/showcase

FEES

• PINC or Litho Club member company $60 – per entry – (1st entry free with 2nd paid entry)
• Non PINC or Litho Club member company $85 – per entry

BONUS: All entries to the Showcase of Print/Design Excellence also have the opportunity to compete on a local level at no additional charge. Select which local Club you would like to participate in on the Manifest Form.

• San Francisco Litho Club – Awards Gala, April 8, 2010
• East Bay Litho Club – Awards Gala, April 22, 2010
• Sacramento Printers Association – Awards Gala, April 24, 2010

A. “Comping” refers to the use of a photograph or illustration in a comprehensive layout for a new project, which is shown to a designer’s client in order to suggest the proposed direction for the new work. Although this is common practice in our industry, you are correct that reproducing an image for such comping without permission is illegal. Under copyright law, any person or entity involved in the unauthorized use of a copyrighted work, from the initial copying through publication and distribution, is liable for infringement. The only exceptions are for fair use. (See Legalities 5 and 6 for a thorough discussion of fair use.)

For a use to qualify as “fair use,” it must survive a multi-factor balancing test:

1. the purpose and character of the use, including whether you’ve made a new transformative work, and whether your use is commercial
2. the nature of the original work, such as whether it is highly factual or imaginative
3. how much of the original work was used
4. whether the new use affects the potential market for the original work#

Many designers believe that comping is legally acceptable, but this is incorrect. When the four factors are evaluated, courts have consistently determined that comping does not qualify as fair use:

1. Comping is a commercial use of the image – it uses the image to promote the designer’s business. This is deemed to be the case even if the image is cropped or distorted.
2. Comping uses highly creative original works of art, which receive the strongest protection.
3. Comping uses the entire image or a significant amount of the original. Again, this is deemed to be the case even if the image is cropped or distorted.
4. Comping directly affects the potential licensing market for the original image, that is, the artist’s right to grant or deny permission, and to charge a license fee for comping.

Comping is a dangerous practice, especially if another artist is selected to do the final work. The comp is what the client sees and approves. As a natural consequence of comping, the final artist must necessarily emulate the comp. It is very likely that the final artwork will be “substantially similar” to the comped image, and thus vulnerable to a copyright infringement claim. If the original artist is commissioned for the final work, she will generally forgive the unauthorized comping. However, if another artist receives the assignment, the situation is ripe for a lawsuit for multiple counts of copyright infringement.

An exemplary case from over fifteen years ago is Curtis v. General Dynamics Corporation (W.D.Wash. 1990). In 1982, the plaintiff Melvin Curtis had created a dramatic photograph of an empty wheelchair on his porch while he was a student at Ohio University. He published the photo, entitled “Wheelchair on a Porch in Athens, Ohio,” in self-promotional materials. In 1985, it was selected for inclusion in the Communication Arts Photography Annual, along with three other of Curtis’ photos.

Meanwhile, General Dynamics, which was involved in defense procurement controversies, decided to do some corporate advertising to improve its image. Wyse Advertising competed with three other advertising agencies for the project. One of Wyse’s ideas was a “subordinate values” campaign to associate General Dynamics with universally held values such as education and patriotism. As part of that campaign, Wyse presented a rough layout about President Franklin Delano Roosevelt, showing a drawing of an empty wheelchair with the headline “His legs were crippled, but he carried the weight of the free world on his shoulders.” Wyse won the account based on that layout.

Thereafter Wyse looked for photographs of wheelchairs to use for the final comp for this piece. Wyse found Curtis’s photo in Communication Arts. Wyse photocopied the photograph, and used a cropped version of it for the next comp of the Roosevelt ad. The comp was approved, and Wyse sought bids for the final photography. Curtis submitted a bid. However, Wyse selected another photographer, Martin Reuben, to do the final shoot. Predictably, Rueben’s final photos were very similar to the comped copy of Curtis’s photo. They showed a similar wheelchair on a similar porch, with the same lighting, composition and viewpoint. Curtis sued for copyright infringement.

The court held that the comping and the final photographs were two separate infringements of Curtis’s copyright. He was awarded $2,750.00 in actual damages (the fee Curtis would have charged had he been given the final assignment), $57,358.00 for Wyse’s net revenue earned from the project, and his attorneys’ fees, as well as an injunction and recall of the infringing ads.

A currently pending case, Mannion v. Coors Brewing Company, 377 F.Supp.2d 444 (S.D.N.Y. 2005), involves a similar situation, only this time the comping was done with the original photographer’s permission. Photographer Jonathan Mannion had taken a photo of NBA player Kevin Garnett for the basketball magazine Slam. Mannion posed Garnett and took the photo from below, so that the viewpoint is up and across Garnett’s body, as if he is towering above. The photo highlights Garnett’s hands crossed over his belly, and his abundant jewelry (as the court stated, commonly known as “bling-bling” or “ice”).

The ad agency for Coors, Carol H. Williams Advertising, got permission from Mannion’s rep to use the photo in a comp for a Coors billboard they called “Iced Out.” On one side, the comp used a cropped and manipulated mirror image of Mannion’s photo showing Garnett’s torso, hands and bling-bling. A can of Coors Light was on the other side. Coors approved the “Iced Out” comp, and the ad agency solicited bids for the final photography. Again, Mannion submitted a bid, but was not selected. The final photo created for the billboard imitated the pose, clothing, bling-bling, and viewpoint of Mannion’s original photo. Mannion sued for copyright infringement after he saw the final billboards on display in Los Angeles. The defendants attempted to get the case thrown out on summary judgment, but the court refused. The court held that there are enough similarities in artistic expression to allow a jury to find that the Coors billboard photo infringed Mannion’s copyright.

While these two examples happen to involve photographs, the same rules apply for illustrations. Reproducing artwork for a comp without permission is automatically infringement. Having another artist imitate the comped artwork may also be infringement, depending upon how closely the second work imitates the first. The test will be “substantial similarity of artistic expression.” See Legalities 25 for more about “substantial similarity.”

As noted above, every person and entity involved in the copying, publication, and distribution of a copyrighted work is liable for infringement. That’s why, in the cases discussed above, General Dynamics and Coors were sued along with their advertising agencies. In your situation, you would also be liable as the independent contractor participating in creating the comp. (In contrast, employees of a design agency would not be individually liable – their conduct is attributed to their employer). So you are correct, you need the agency to indemnify you against any infringement claims. Without such indemnification, you are at risk of being named for willful infringement in a copyright lawsuit. While most plaintiffs go after the advertising agency and their ultimate clients, such as General Dynamics or Coors, they are also entitled to recover damages from the individual who actually created the infringing comp.

The best way to be protected is to have a written agreement stating that in exchange for your agreement follow their instructions, the ad agency will indemnify you against any claims of infringement. The agreement should also state that the agency has sufficient insurance to defend an infringement claim, and you will be an additional named insured. Here is some sample language:

Warranties and Indemnification: Agency hereby warrants that any materials or creative authorship provided by Agency or which Agency instructs Designer to include in the work product shall be original to Agency, or are in the public domain, or are used under permission from the respective copyright or other intellectual property rights holders, and shall not infringe the copyright, trade dress, patent, trade secret, or other property rights of any third party. Agency shall defend, indemnify, and hold harmless Designer from any damages, costs, expenses, and attorneys’ fees, incurred by reason of any breach of Agency’s warranties provided herein; or any acts or omissions of Agency, its agents, contractors, or employees, arising out of this Agreement. If any action or proceeding is brought against Designer by reason of any such claim, Agency (upon notice by Designer) shall defend the same at Agency’s expense by counsel reasonably acceptable to Designer.

Insurance. Agency shall maintain, during the period of this Agreement, at its expense, product liability, general business liability, and advertising injury insurance from a recognized insurance carrier in the amount of at least five million dollars ($5,000,000.00) per occurrence. Such insurance shall name Designer individually as an additional named insured. Agency shall provide a copy of said insurance policy to Designer at Designer’s request.

Editor’s Note: The Graphic Artists Guild endorses a policy called “Ask First”, stating that comping of artwork should only be done with the creator’s permission.

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You are invited to submit questions for upcoming Legalities columns. Please send your questions to .

Legalities is a service mark of Linda Joy Kattwinkel. © 2006 Linda Joy Kattwinkel. All Rights Reserved. The information in this article is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists with the firm Owen, Wickersham and Erickson in San Francisco. She can be reached at 415-882-3200 or .

An archive of previous Legalities articles is available at Linda Joy’s website.

AIGA members are invited to join the AIGA Member Gallery—an exclusive network hosted by Behance—to gain broader exposure for their work, connect with like-minded designers, and be discovered more easily by potential clients and recruiters.

JOIN THE NETWORK NOW

1. Create a Behance account (If you already have a Behance account, skip to #2.)
2. Edit your profile in Behance
3. Select My Networks tab
4. Select All Networks
5. Click “Join” link next to AIGA Member Gallery
6. Enter your AIGA credentials (Forgot them? Go to My AIGA and click Find Me.)

About the AIGA Member Gallery
The new AIGA Member Gallery, hosted by the Behance Network, was launched in early 2010. Joining this network will allow you to:

Gain broader exposure for your work
Your work will be shown both on the AIGA Member Gallery and in the larger Behance Network that attracts millions of visitors per month.

Be discovered by recruiters and employers
Keyword search is built in, meaning that you can tag individual pieces and portfolios with the keywords employers, recruiters, editors, and industry leaders use to find and hire top talent.

Connect with designers and partners
The AIGA Member Gallery gives you the ability to create communities through projects, collaborate with other creative minds and solicit constructive feedback on current and past projects in your portfolio.

Showcase your work in a professional atmosphere
Put your best foot forward by building a multimedia portfolio with an unlimited number of projects. You can also select a “frame view” version to send a simple, stripped-down gallery of your work to potential clients via your own URL.

FAQs

Q: What does the new portfolio service look like?
Take a look! AIGA members are adding new projects every day. If you’re a current member, follow the steps above to begin adding your work to the gallery. (Not an AIGA member? Join today to take advantage of all the benefits of membership.)

Q: Why is this happening?
This transition is one of several currently in progress to provide more opportunities for contributions to—and participation in—the AIGA website. This new portfolio system is just one of the ways in which AIGA is helping members to connect.

Q: When is this happening?
As of December 31, 2009, beta testing has been completed and all AIGA members are now invited to join the network. If you have difficulty setting up your portfolio, contact Behance for technical support.

Q: What happens to my current AIGA member portfolio on the Design Jobs site?
Existing portfolios in Design Jobs will become unavailable in late winter 2010. We’ll be sending multiple notifications to everyone who currently has a portfolio, providing instructions for making the switch as smooth as possible.

Q: What happens to my portfolio if I don’t renew my AIGA membership?
If your membership has expired, your portfolio will no longer show up as part of the AIGA Member Gallery, but it will remain on the Behance Network—just without AIGA affiliation. When you reinstate your AIGA membership, you’ll be able to re-join the AIGA Member Gallery network in Behance so that you can enjoy the benefits of inclusion in this trusted and respected professional network.

Q: Will there be a space to display my resumé?
In the coming months, Behance will be launching a powerful feature that will allow users to enter their current/previous work experiences, for the purpose of displaying this information on your profile and—in the future—connecting with past colleagues. In the meantime, some users create a project with their resumé information.

Q: Can I add a URL that links to other websites/projects I have done?
Yes, users can add URLs to their profiles in the Edit Profile setting. Another option is to add links and linked-text within a project. To do this, simply add a TEXT module to your project and select the icon for inserting a web link from within the text editor.

Q: Can I organize the projects in my portfolio by groups?
While users can add specific tags and creative fields to each project that they publish in their portfolio, Behance doesn’t currently offer the ability to group projects by a specific group name. However, this is a feature that Behance plans to develop and implement in 2010.

Q: What about AIGA Design Jobs? Can I still find or post a job?
AIGA Design Jobs will soon relaunch as a trimmed down, easier-to-use resource for talent and opportunity in the design profession.

Now I have a clause in my new form contract that states:

“LICENSE OF RIGHTS/COPYRIGHT: The Designer transfers to the Client rights to reproduce selected final design. All preliminary, unused, and in-progress artwork remains the property of the Designer. Under U.S. Copyright law, Designer is the owner of all files and artwork created for the Client.”

Of course, since I copied this clause from a fellow designer, who copied it from someone else, I actually am not sure what is entailed in this U.S. Copyright law I’m citing.

My question is this: If I want to grant an unlimited license to a client (for, say, a logo design), then do I have any copyright rights at all? For example, am I free to post the logo on my website (or portfolio) and have a “copyright 2005 (my company name)” line along the bottom, as I do on all of my web pages? Obviously, I have no plans to use the artwork I created for her in any other way for any other client, but I want to make sure I maintain any rights “under U.S. Copyright law.”

Can you please advise on how to protect my rights as a creator of original artwork for a client when I want to grant full usage rights to the client? I am definitely leaving in the part about preliminary, unused, and in-progress artwork, but my question pertains to final, approved artwork.

A. You are on the right track with your new contract clause. However, both you and your lawyer client seem to be confusing the two separate concepts of (1) ownership of tangible media comprising the artwork (“all files and artwork”) and (2) copyright ownership. You are not alone in this confusion. As your question demonstrates, even lawyers who don’t practice copyright law often don’t understand this distinction.

Copyright is the intangible right to control how your artwork is reproduced, including how it is “used, altered or otherwise exploited” (17 U.S.C. Sec. 106). This is separate from owning the physical artwork (17 U.S.C. Sec. 202). Copyright ownership doesn’t necessarily follow along with a transfer of ownership in the tangible artwork. You can give your client all the files and artwork, but still keep copyright ownership yourself. Conversely, you can keep all files and artwork, but still transfer copyright ownership to your client. Under copyright law (17 U.S.C. Sec. 201), you own copyright in your work as soon as you create it, and you can’t transfer that copyright ownership except by a written document signed by you. Such a transfer must explicitly say that you are transferring or assigning “copyright.” Otherwise the copyright stays with you even if you give your client the tangible files and artwork.

If your contract doesn’t explicitly transfer copyright, you will be granting your client a license to reproduce the artwork under your copyright ownership. The scope of the license depends upon what the written contract says, and sometimes what would be reasonable under the circumstances even if the contract is silent on the issue. See Legalities 14 and 15 for more on the various licensing possibilities.

In this case, your original contract with your lawyer client did not explicitly mention copyright. So your lawyer client is probably wrong if she thinks she owns your copyright, but she could be right about the scope of her license to use and alter the artwork. That would depend upon the understanding you had, which may or may not be adequately reflected in the wording of your contract. It could also depend upon what kind of work you did for her. If it is a logo, that has a special set of considerations. Because a logo is intended to be a comprehensive company identity, it would be reasonable for your client to expect that she was buying the exclusive right to reproduce it on all of her business materials without limitation, and perhaps even to make new versions (called “derivative works” – See Legalities 14.

In any event, you probably do have the right to show your work in your portfolio. Arguably portfolio use is a fair use even if you assigned all copyright to your client. However, its best to have a contract provision making this clear.

Here’s how I would tweak your new contract clause to grant all usage rights in a logo to your client while ensuring that you retain copyright and portfolio rights. This version also makes the distinction clearer between ownership of tangible artwork on the one hand, and copyright ownership on the other:

LICENSE OF RIGHTS/COPYRIGHT: Subject to Designer’s portfolio rights below, Designer grants to the Client the exclusive, perpetual and worldwide rights to reproduce, display, distribute, and create derivative works based on, the selected final design in all media. All preliminary, unused, and in-progress artwork remains the property of the Designer and no rights to use such preliminary works are granted hereunder. Under U.S. Copyright law, Designer retains all copyright in and to the preliminary works and the final design.

PORTFOLIO RIGHTS: Designer retains the nonexclusive, perpetual and worldwide right to display, reproduce and distribute the designs in Designer’s portfolio and website, and third party trade publications or exhibits, solely for the purpose of promoting or exemplifying Designer’s work, and the right to be credited with copyright ownership and authorship of the designs in connection with such use.

However, when you are designing a logo for your client, it is not usually necessary to retain copyright. As you noted, you would not use the logo you created for her in any other way for any other client. See Legalities 1. Thus, all you really need is the portfolio rights, which can be granted back to you by your client after you transfer copyright to her. See Legalities 15 for appropriate language for this alternative assignment and “license back” of portfolio rights.

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You are invited to submit questions for upcoming Legalities columns. Please send your questions to .

Legalities is a service mark of Linda Joy Kattwinkel. © 2005 Linda Joy Kattwinkel. All Rights Reserved. The information in this article is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists with the firm Owen, Wickersham and Erickson in San Francisco. She can be reached at 415-882-3200 or .

An archive of previous Legalities articles is available at Linda Joy’s website.

View videos of presentation made at “Make/Think”—AIGA’s biennial design conference held in Memphis, Tennessee from October 8–12, 2009.

The AIGA Design Conference is a biennial gathering of the design community to celebrate design excellence, reinforce friendships and connections and stimulate thinking about the critical issues that surround design practice.

View Videos Here

Adobe TV is Adobe’s online TV network, offering free training, inspiration, and information about the latest Adobe products & services. New podcasts are added regularly.

Creative Suite Podcast: Designers – Draw more easily with the New Blob Brush
In this episode you’ll learn how to take advantage of the New Blob Brush in Illustrator CS4 as well as the Eraser Tool introduced in CS3.
Watch Now

CSInsider | Design – Creating Interactive Documents
In this episode, Rufus Deuchler shows you how easy it has become to add interactivity to your Adobe InDesign CS4 documents.
Watch Now

Taming The Web with Greg Rewis – Adding Dynamic Content
In this Adobe Dreamweaver CS4 tutorial, Greg Rewis shows you how to add dynamic content to your project such as updating featured items on a menu by pulling data from a database.
Watch Now

AIGA’s suite of competitions is widely recognized as the most discerning statement on design excellence today, extending a legacy that began more than 90 years ago. By means of the competitions, AIGA creates an authoritative chronicle of outstanding design solutions, each demonstrating the process of designing, the role of the designer and the value of design.

Your work must be designed, produced and used in the marketplace between January 1 and December 31, 2009.

Deadline: March 5, 2010

About 365: AIGA Annual Design Competition
The selections in AIGA’s annual competition represent the best work across all disciplines of communication design and strategy, as chosen by a distinguished jury of design peers. As such, they become part of the AIGA Design Archives, a searchable visual database of exemplary design, they are exhibited at the AIGA National Design Center in New York and offered as a traveling exhibition for display across the country. The physical artifacts comprise the AIGA Design Archives at the Denver Art Museum.
Enter AIGA: 365 Annual Design Competitions 31

About 50 Books/50 Covers Competition
This time-honored competition aims to identify the 50 best-designed books and book covers that have been designed, produced and used in the marketplace between January 1 and December 31, 2009, as chosen by distinguished jurors. As such, they become part of the AIGA Design Archives, a searchable visual database of exemplary design, they are exhibited at the AIGA National Design Center in New York and offered as a traveling exhibition for display across the country. The physical artifacts comprise the AIGA Design Archives at the Denver Art Museum. A second set of the awarded books and covers becomes part of the Rare Books and Manuscripts Collection at the Butler Library, Columbia University, New York.
Enter About 50 Books/50 Covers Competition

AIGA San Francisco, The SF Chapter of the Industrial Designers Society of America (IDSA) and the Interaction Designers Association (IxDA) would like to introduce you to this year’s Digging Deeper, Building Blocks for Sustainable Design – A multi-disciplinary design competition addressing real urban needs.

On the afternoon of Sunday Sept. 27th the Digging Deeper 2009 program began with two informative and inspiring presentations. A leading systems ecologist and CEO of Natural Logic teamed up with the Greening Director of the Office of the Mayor of San Francisco to deliver a design brief. They describe issues around urban food supply, health and agriculture relevant to the City of San Francisco and all urban areas. The presentations were specifically formatted to be the foundation of this competition, bringing industrial, graphic and interaction designers, architects and urban planners together to help solve real urban problems.

This is a call to action for all design communities.

Please view these half hour clips and help us improve the City of San Francisco:
Part 1: Approach and Inspiration by Gil Friend
Part 2: Competition Problem Statement by Astrid Haryati

All entries are due by midnight Jan. 31st 2010. There will be Cash Prizes for placing 1st – 3rd in each of two categories.

Read more about the competition and how to enter.

Please fill out the volunteer application here.

There are 2 levels of volunteer opportunity:

COMMITTEE CHAIR

Committee Chairs manage and guide committee members to implement the committee goals and responsibilities

Commitments:
• attend monthly strategic planning meeting (1st monday of each month) & individual committee meetings
• commit to a 6 month minimum time frame
• put in a minimum 15 hours a month

COMMITTEE MEMBER

Committee Members work with Committee chairs to help implement the committee goals and responsibilities, working as a team

Commitments:
• commit to a 3-6 month time frame
• put in min. 8 hours a month

OPERATIONS COMMITTEE
Operations main responsibility is organizing and managing IP class sessions and workshops. They are in charge of the scheduling plan, organization of student forms, communication with parents, logistics of food source etc. (POSITIONS OPEN: Co-Chair & Members)

FUNDRAISING COMMITTEE
Fundraising Committee’s main responsibility is to Develop a fundraising plan for 2010 and raise a specific amount for the organization’s sustainability. Duties are broken down into 3 categories: Grant Writing, Events, Quick Money generator. (POSITIONS OPEN: Co-Chair & Members)

OUTREACH AND VISIBILITY COMMITTEE
Outreach & Visibility are 2 different responsibilities but must work together to achieve the committee’s goal of bringing about awareness and keeping the community engaged with IP.

Specifically, Outreach is in charge of increasing student registration numbers by building partnerships with parents, schools and other targeted community members.

Visibility on the other hand, is in charge of marketing and PR, building reputation and increasing awareness of our program for fundraising purposes, volunteer/teacher recruitment, and outreach support. (POSITIONS OPEN: Co-Chair & Members)

EVENTS COMMITTEE
IP holds an annual fundraising event and end of session reception twice a year. You can participate just as an event volunteer or as a committee event participant as well. Some of the duties included are: set-up/breakdown, traveling onsite, communication with different vendors, evening or weekend availability (approx. 4hrs, 2x a year)
(POSITIONS OPEN: Members)

For more information, contact:
Lauren Rock & Charmian Naguit
Volunteer Management Co-chairs
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INNERACT PROJECT

http://inneractproject.org

Q. I am starting a small business making greeting cards. I have used some color photographs from a book and then changed them using Photoshop to alter them. They are now black and white and highly stylized and combined with a patterned background. Have I infringed copyright here? Also, is using old fabric in my designs an infringement?

A. Unfortunately, some cases have held that the mere act of making a digital copy of an image makes you liable for copyright infringement, regardless of any changes you make to it in order to create your own final image. This is called “intermediate” or “precursor” image liability. Similar rulings have been issued with respect to music sampling. There is a good argument that precursor image liability is not consistent with the meaning and purpose of U.S. copyright infringement laws (which were written before digital scanning became possible). Digital copying is merely a more high tech way to use another work as reference material — analogous to the creative process in traditional media of making a manual sketch of the photograph on your canvas, which you then revise and alter as you evolve the final painting. Under this argument digital technology is just another artistic tool in the process, and it shouldn’t matter what any such intermediate images look like (high tech or not). What should matter is whether your final image is so similar to the photograph that it constitutes infringement. However, I’m not aware of any cases that have endorsed this argument. So for now, it is not safe to create greeting cards by digitally altering photographs without permission from the photographers (or other copyright owners of the photographs).

With respect to old fabrics, the answer depends first on whether the fabric is old enough to be in the public domain, and if not, whether you’ve used it in a way that qualifies as fair use.

Under U.S. law, if the fabric was published or registered before 1923, it is in the public domain. After that, it gets complicated:

- Works published or registered 1923-63 may have copyright protection for 67 years, depending upon whether renewal registration was made.

- Works published or registered 1964-1978 have copyright protection for 95 years.

- Works created in 1978 or later have copyright for the life of the author plus 70 years.

Generally, the first step to try to determine how old the fabric is would be to contact the manufacturer or seller of the fabric and ask them what information they have. You can also have the U.S. copyright office do a search for copyright registrations. See www.copyright.gov, Circular 22. However, you’ll need some sort of verbal identification to enable a copyright office search — such as the name of the fabric design or the manufacturer — they cannot search by imagery.

See Legalities 5 re: fair use of fabric patterns in artwork.

Also note: copyright liability varies from country to country. Other countries may not agree with U.S. jurisprudence regarding high-tech scanning or fair use. If you are using photographs or fabrics created or published in another country, you should consult a lawyer in that country for the applicable law. See below.

A. There are no international copyright laws. Each country has its own copyright law with variations in rights and remedies. However, there are international treaties that require the member countries to give each other’s citizens the same copyright protection that they give to their own citizens.

Your contract with the publisher should have a “choice of law” or “governing law” provision that says which country’s law applies to your publishing contract. If it says U.S. law governs, then you definitely need to worry about the work-for-hire issue. Generally, work-for-hire is a U.S. concept that most other countries don’t honor. However, you or your lawyer would have to check the specific law of the foreign country identified as the governing law to find out if they have a work-for-hire concept of copyright ownership. You should also check if that country is a member of one of the international copyright treaties.

For more about work-for-hire, see Legalities 4.

Q. How does a licensing agreement affect an author’s copyright? I queried signing over all my copyrights and moral rights to a publisher and they suggested a licensing agreement for four years. Does this mean I maintain copyright of my work?

A. A license grants the publisher a limited right (or permission) to publish your copyrighted artwork in certain ways under certain conditions, rather than giving it entire control over your artwork through a copyright assignment. Generally, licenses are much better for the copyright owner than an assignment, and it sounds like the better alternative in your situation.

Under a license agreement, you keep your copyright. When the license term expires, the publisher would need to renew the license in order to continue publishing your artwork. Unless there are terms in the contract controlling its option to renew, that gives you the chance to negotiate for better compensation, or to switch to another publisher if you’re not happy with this one. Another advantage is that under a well-written license agreement, if you don’t get paid, you would have the right to cancel your permission to publish the artwork before the license expires. This gives you more bargaining power to collect overdue royalties.

Under an assignment, the publisher gets all control over your artwork including the exclusive right to publish it for at least 35 years (at that point, you have the opportunity to cancel the assignment). Sometimes the publishing agreement includes a provision to revert the copyright ownership back to you if the book goes out of print, but it can be burdensome to get them to do so. It’s generally better not to give up all your rights in the first place. Also, if the publisher fails to pay your royalties, you would only have the right to sue for monetary damages; you would not have the legal right to stop publication or to get your copyright assigned back to you.

“Moral rights” refers to a set of rights that stay with the artist regardless of whether your copyright is assigned. These include the right to be accredited as the creator of the work, and to prevent it from being destroyed or altered. Currently, such rights are limited in the United States to original works of visual art. They do not apply to commercially published copies of your artwork. (Moral rights are much broader in Europe, where this concept originated.) However, many publishing contracts are including assignment of moral rights to cover any potential future applicability to commercial reproductions.

Q. A few years ago I was represented briefly by an agent who is now no longer in business as an agent. We ended our business relationship, but because she repped a book for me and it sold, we are still “contractually” tied by that book. Each royalty period, she gets the check from the publisher and sends me a money order for my cut. I suspect she would like it if I would “buy her out” of the contract since I’m sure she doesn’t like keeping up with the paperwork, etc. I would like this, as well, but I think we should sign a joint severance with no money changing hands at this point. It’s quite frustrating, because after she sends the money order then I have to write or call her back and ask for a copy of the royalty statement since she doesn’t just automatically send it with the money order. Also, she has never sent me a 1099 for my taxes. What kind of options do I have to end this contract so that in the future I can deal directly with the publisher?

A. You can end the current arrangement by mutual agreement. Normally, this means a new contract in which you set an amount to buy-out your rep’s rights to receive future revenues under the old contract, and then you both notify the publisher that it should send future royalty checks directly to you. The buy-out amount is usually based on a projected estimated amount she would likely receive over the life of the book, discounted to reflect the benefit to her of getting a lump sum now instead of smaller amounts over time. If you want to end the relationship without paying her any money, you need to have a rationale for arguing that she is not entitled to future revenues. Generally, that would mean a material breach of the original contract. A material breach is something pretty severe, such as failure to timely pay you your royalties. I doubt that her failure to timely send the royalty statements, or the 1099s, amounts to a material breach, especially since there may be an argument that you’ve waived your right to complain about that by acquiescing to such conduct over time. I suspect the wiser approach would be to negotiate a fair buy-out amount and sever the relationship amicably.

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You are invited to submit questions for upcoming Legalities columns. Please send your questions to .

Legalities is a service mark of Linda Joy Kattwinkel. © 2009 Linda Joy Kattwinkel. All Rights Reserved. The information in this article is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists with the firm Owen, Wickersham and Erickson in San Francisco. She can be reached at 415-882-3200 or .

An archive of previous Legalities articles is available at Linda Joy’s website.

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Design and Identity by Hybrid Design
Paper and Printing by Hemlock Printers
Deck Photography by Jay Ganaden Photography

Designer A:
Q. I was hired to prepare a one-time brochure for a client. The job was delivered to the printer (print-ready pdf file), the brochures were printed, and I was paid the fee I had quoted. Now my client wants me to give him my InDesign and Photoshop files for the brochure. I think he wants them so he can re-use my work for other projects. I don’t have a written contract. Do I have to give the client my files?

Designer B:
Q. I was hired as a freelancer to produce a monthly magazine. My monthly role was to take all of the camera-ready ads, article text and images provided by the client, and lay out a 40-page magazine. My client and I are now “going our separate ways.” The client is claiming that they paid me to produce the template for the magazine, and they want ALL my working files for the past 2 years (InDesign, Photoshop, etc.), to give to the next designer for future production. My understanding is, as a freelance designer, I maintain the rights to the working files and the client has rights only to the mechanical file (i.e., the pdf for the printer). I do not feel the client has the right to all files used in my process of designing and laying out the elements on the pages (i.e., unique treatments to photographs, unique typographical treatments, etc.). Also, if I am right, and the client still insists on obtaining all of the files, can I demand that they pay for a transfer of rights?

A. I am hearing these kinds of questions a lot lately. Many clients think that because they pay you to do design work for them, they are entitled to all of your work product (including your digital files). This is a common, but mistaken belief. Clients do not automatically own everything you create for their project. It depends upon what scope of usage rights you and your client agreed upon when the client hired you. Or, if your agreement was not clear, it depends on what the law would consider reasonable. That can be a complicated analysis.

As a freelancer, you own copyright in your work

First, it is important to know that under U.S. copyright law, when you work as a freelancer (or “independent contractor”), you are the “author” and copyright owner of your work, even though your client is paying you to do it. As the copyright owner, you start out with all of the exclusive rights under copyright law: e.g., the rights to make and distribute copies of the work, publicly display the work, and make adaptations or “derivative works” based on your work. These rights cannot be transferred to anyone else just because they paid for your work. In order to give your copyright (or a “buy-out” of all rights) to your client, you have to sign an explicit written assignment of your copyright. Often, there is no explicit assignment in a freelance graphic design contract. Certainly, if you have done the work without a written agreement, you cannot have given copyright ownership to your client.

You can decide what kind of usage rights to give to your client

As the copyright owner, you can grant permission (or a “license”) to someone else (e.g., your client) which allows him to exploit your rights under copyright. As part of granting that permission, you, as the copyright owner, can put limits on the scope of your client’s use. You can decide, for example, in what media, for what purposes, and for what time frame the client can use the work. You can decide to give your client “exclusive” rights to your work, meaning no one else can use it. Or you can decide that the client will get to use the work on a nonexclusive basis (meaning you can re-use the work and license it to other clients), or on an exclusive basis for a limited time. You can decide if the client gets the rights to make modifications, such as change colors or distort or crop an image, or to use your work as a basis to make new works. You can also decide what to charge for the license.

When you are talking to a potential client about his project, that is when you can find out what kind of usage rights will be appropriate. This is important, because the scope of usage rights will help you decide how much you should charge for the job. Your fees should reflect not only the amount of work involved, but also the scope of the usage rights you are granting to the client. Your fees should be guided by general industry standards, your level of expertise and experience, and your personal values. For example, many copyright owners give nonprofit clients lower fees.

Your arrangement with the client determines usage rights, even if they aren’t spelled out

Ideally, your project proposal or independent contractor agreement will clearly define the purpose or intended uses for your work, and it will state the corresponding usage rights the client will receive upon final payment. The specific “deliverables” that the client receives should also be defined, and it should be clear whether all your working files, or, more commonly, just the final digital files for the final art, will be turned over to your client as part of the deliverables.

But as the questions above demonstrate, frequently these matters are not clear, or not even mentioned in your contract; or you may not have a written agreement. In any event, clients often do not understand the concept of a limited license. Often they presume that they are receiving a buy-out of “all rights” just because they are paying you. So how do you deal with these disputes?

Consider how a court would deal with the dispute

First, it is important to know how courts deal with these kinds of disputes. Not because you expect to go to court, but because the potential legal outcome gives you bargaining leverage. (Especially if your client is threatening to sue you, it gives you negotiating power to know how a court would likely rule so you can explain that to your client.)

Many people think that there is no enforceable agreement without a written contract. That is not correct. As a general rule of contract law, oral agreements are enforceable. There are some exceptions, however. As noted above, under copyright law, you cannot have an oral agreement to assign your copyrights. So a court will never award a buy-out of all rights to your client if there is no written assignment. In fact, your client cannot even get an exclusive license without a written agreement.

If you don’t have an explicit assignment or exclusive license in writing, then at most, the court will find that your client has a nonexclusive license to use your work. If the terms of the nonexclusive license are not clearly spelled out in a written agreement, the court will have to determine the scope of the “implied” license. The usage rights granted under that implied license will be what you and your client both understood the client needed when you first agreed to do the work. That will not necessarily be what the client is claiming now. So the court would look at circumstantial evidence about the project and the scope of usage rights required.

For example, the court would look at the design brief, your written proposal, if you have one, and any other documents (such as emails), to see if they indicate how your client was expected to use the work. The court will also look at what you charged for the work, compared to what other designers typically charge for unlimited usage rights for similar projects. If your fees are much lower than the normal fees for unlimited usage, that will be strong evidence that your client received only limited usage rights.

Once the court determines the appropriate scope of usage rights, it will decide if the client needs your working files to use the work for those purposes. If the client doesn’t need the files for those purposes, then the client will not be entitled to receive your working files.

Here’s how the legal process would play out for Designer A:

There is no written contract, so Designer A’s client cannot own all rights. At most, the client has a nonexclusive license to use the work for the scope of the project as both Designer A and the client intended when they first agreed she would do the work. Designer A asserts that she was hired to design a one-time brochure, and let’s assume she charged a fee consistent with one-time use. The court would look at these facts. The court might also consider that the client paid for the work when the final print-ready file for the brochure was delivered (inferring that all deliverables had been provided at that point). The client does not need Designer A’s working files in connection with the brochure, because it is finished. Accordingly, the client is not entitled to the files.

Designer A can explain all this to her client. He isn’t entitled to her working files because she didn’t grant him, and he hasn’t paid for, the rights to re-use her work (in other words, he hasn’t paid for the rights to create derivative works). If Designer A is willing to let her client create derivative works from her brochure design, she can offer to sell him those additional usage rights for an additional fee, and then she will give him the working files.

For Designer B, the issues are more complicated:

The purpose for Designer B’s work is less clear. Was he hired to create a template for future issues of the magazine, or only to do the layouts on a monthly basis? Designer B and his client did not talk about what would happen if Designer B stopped working for the client. Nevertheless, the court would have to decide if the designer and the client should have reasonably expected that the magazine would be entitled to continue with the same look and feel created by Designer B, even if this particular designer stopped doing the monthly layouts.

The court might consider the following in making its decision: Did Designer B’s work dramatically change the look and feel of the magazine? Did the magazine consistently reflect that new look over the two years that Designer B was doing the layouts? If so, that indicates that Designer B was creating a new art direction for the magazine. Was Designer B’s consistent use of the same unique treatments that he created for the photographs, type, etc. an important part of the new look? If so, that would indicate that his client needs the working files to continue using Designer B’s art direction.

But there are other considerations. How much was Designer B paid for his work? Has Designer B done similar projects for other clients? If so, how much was he paid, and for what usage rights? How much are comparable designers paid just to create a new art direction for a magazine, and then deliver the style guide and template for others to follow? How much are designers typically paid just to do the production work of laying out the magazine, following pre-established style guides? If Designer B was paid fees comparable to those normally paid just for production work, that would indicate that Designer B wasn’t paid to give his client the rights to create derivative works (i.e., new issues of the magazine) based on Designer B’s work.

How unique are Designer B’s techniques for the photo and type treatments? Did he spend a lot of effort and skill to develop them? Does Designer B keep these techniques secret? If so, the court might decide that they are Designer B’s trade secrets, which he should not be forced to disclose to his client (or the client’s new designers) without significant compensation.

If the court concludes that Designer B’s client did not pay for rights to use Designer B’s work for new issues of the magazine, then the client would not be entitled to Designer B’s working files. In that case, Designer B can demand an additional payment before he grants his client the additional usage rights and access to his working files.

Let’s assume that given all of these considerations, it is difficult to predict how a court would rule on Designer B’s dispute with his client. The more factual issues in dispute, the more chance there is that a court will get them wrong. That means Designer B has relatively weak bargaining power. He could offer a compromise, for example, he could give the client working files for the magazine layout grid, but not the files that reveal how he accomplishes his unique treatment of photos and type. Presumably, those techniques represent a valuable personal skill set, which Designer B is understandably reluctant to share with competing designers.

What if your services are terminated in the middle of a project?

If your client terminates your services in the middle of a project, the general rule is the client gets only what he has paid for at the date of termination. If you have a clear proposal that defines deadlines for interim payments and corresponding deliverables, then the client may believe you must give him the files for those interim deliverables. But that may not be correct.

Again, without a signed assignment or exclusive license, the general rule is your client will get only a nonexclusive license to use your work product. (Even if you have an assignment in your written contract, the assignment should be contingent on final and full payment for the work. So if the client terminates before the work is completed, the assignment will not be effective.) When the project is not finished, your client may assert that he can take your preliminary working files and finish the design on his own (or hire someone else to do it). But to a court, this may look like the client is trying to get the full benefit of the contract, or even more, without paying the full price.

For example, a mid-stage deliverable may include three options for a design direction. Later the client would choose one direction, and then the final deliverables would comprise final art for that selected direction (along with, presumably, the corresponding rights to use only that final direction). If a court were to allow your client to terminate the contract after paying only half of your fee, but then have usage rights to all three of the interim directions, your client would end up with more usage rights (for three directions) than if he had paid for you to complete the project (for the one final direction). If the court is well-informed about design industry practices, the court would likely conclude that your client has no rights to use your preliminary art, and thus no rights to your working files. But that is a big “if.” Courts are not typically familiar with the design industry. Thus, it may take a lot of attorney time (and fees) to educate the court on these issues, and even then the outcome of litigation is uncertain.

Be proactive—educate your client before a dispute happens

The best way to avoid such disputes is to talk about these issues with your potential client up front, when you are first negotiating the contract. I like to see a very clear discussion of usage rights in designer’s written proposals and client contracts. For example:

1. Give your client a range of options for usage rights and corresponding fees, and ask the client to choose the option he wants. That way, it is clear up front that different levels of usage rights require different fee amounts.

2. Be clear what deliverables will be provided with each option, including specifically what type(s) of digital files, if any, will be delivered. Only usage rights that allow the client to create derivative works, or re-use your work for other projects, should include delivery of your working files.

3. If you are not offering the option to re-use your work, be explicit about that as well. State that no rights to create derivative works will be granted, and that no working files will be delivered.

4. If you have developed certain techniques, e.g., for photo or type treatments, that you consider part of your standard skill set, be clear that the client is not getting access to the working files for those techniques. I like to call these “design tools.” You can deliver final designs, and final art files, that were created using your design tools, but you don’t need to disclose your techniques to your clients.

5. Always include a provision making it clear that no usage rights are granted, and no digital files will be delivered, until full and final payment has been received. This way, when a client terminates in the middle of a project, or fails to pay you, it will be clear that he has no rights to use your work or to have access to your files.

When your client actively chooses the appropriate usage from a list of options (especially if he chooses a lower level at a lower fee), it will be pretty difficult for him to claim later that he didn’t understand the limits on his usage rights, or that shouldn’t have to pay more for broader usage rights. This practice also sets the rates for upgrading usage rights. So it is a good way to avoid future disputes about the amount of additional fees your client needs to pay if he wants your files for purposes outside the scope of his original usage rights.

Get help drafting your contract

There are many resources to help you draft appropriate contract language. For example, the AIGA Standard Form of Agreement for Design Services (which I co-authored) includes definitions of Preliminary Art and Designer Tools, with provisions in the IP section (Schedule A) that retain the Designer’s ownership of both. The IP section also lists several options for granting different levels of usage rights. You can use these as a guideline for identifying different options for usage rights and fees in your proposal and contract documents.

There are also sample forms in the Graphic Artists Guild Handbook of Pricing and Ethical Guidelines, and Tad Crawford’s Business and Legal Forms for Graphic Designers.

When you write a contract based on sample forms, or using sample language from different sources, you may be creating an ambiguous document which may not hold up in court. So when you finish your draft, consult an intellectual property attorney to make sure your draft accomplishes what you want it to do legally. Buying a couple hours of attorney time is a worthwhile investment. Once you have a solid draft for one client, you will also have a reliable template for future projects.

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You are invited to submit questions for upcoming Legalities columns. Please send your questions to .

Legalities is a service mark of Linda Joy Kattwinkel. © 2009 Linda Joy Kattwinkel. All Rights Reserved. The information in this article is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists with the firm Owen, Wickersham and Erickson in San Francisco. She can be reached at 415-882-3200 or .

An archive of previous Legalities articles is available at Linda Joy’s website.

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You are invited to attend:
Linda will be speaking with Shel Perkins on a wide-range of legal issues affecting designers in a digital world, followed by a Q + A. AIGA Make/Think Conference in Memphis, TN, October 10

Visit Linda Joy during Fall Open Studios, 11 a.m. to 6 p.m., Saturday, Oct. 31 and Sunday, Nov.1, at Hunter’s Point, Building 101, Studio 2421.

PLEASE VISIT MICRO-SITE FOR ALL DETAILS

AIGA San Francisco presents its Annual Fall Gala: “Hung Up.” Hosted at The Galleria at the San Francisco Design Center, the event attracts 700 attendees and will feature custom-designed skateboard decks. Not only is the Gala an opportunity for the design community to come together and appreciate our creative spirit, but it is also a special evening for our sponsorship partners.

AIGA San Francisco is celebrating the art of skateboarding and are inviting artists and designers to contribute custom skate decks, which will be auctioned off at the end of the night. In addition to the silent auction, there will be a raffle — ranging from posters, restaurant vouchers and magazine subscriptions to a copy of Adobe CS4 — and a live art component.

Buy your raffle tickets ahead of time in packs of six(6) tickets for $5.00.

Design and Identity by Hybrid Design
Paper and Printing by Hemlock Printers

• Sign Up Online to Partner with AIGA or Donate a Raffle Item.
• Download Sponsorship Packet.

By David Stairs

“The subordinate place of history, theory, and criticism in design education is concomitant with the difficulty most designers have in envisioning forms of practice other than those already given by the culture.”
–Victor Margolin

Turf Wars
When Victor Margolin published those words in 2002 in his Politics of the Artificial I chastised him for being too tentative about change. It seemed to me at that time that the design world was on the verge of embracing socially relevant design, one of the new forms Margolin was advocating for. I had just returned from two years overseas. HOW magazine had published an article about my initiative starting a 501©(3) called Designers Without Borders, and there had been a mild ripple of interest, mostly from younger designers ostensibly looking for alternative design practice opportunities.

Read entire article HERE.

As an AIGA Member, you can receive a 15% savings if you purchase through the Adobe Store.

To redeem, Click Here please complete the form. After submitting your information, you will receive an email containing an Adobe Store URL where you will see your discount reflected throughout the shopping experience.

• The email may take up to two hours to arrive. If it doesn’t arrive within that time period, please check your spam folder.
• If you have any problems receiving your Adobe Store coupon, you may also contact Adobe Sales at 800-585-0774 from 5am to 7pm Pacific Time Monday through Friday. Please identify yourself as an AIGA member and let them know that you are eligible for the 15% savings as part of your membership benefits.
• Only one URL will be provided per member per three month time period. If you try to request a second code within that time, you will receive an error message and will not receive another URL.
• This offer is ONLY valid on the web page or through the Adobe Sales department.
• You will be required to provide your name, your member number and your email address in order to receive your discount. The name you provide in the form must match the name you provided as your member name.

Our membership includes small boutique firms, medium-to-large-sized firms, in-house creatives, freelancers and students. Our members work in print, interactive, product design, user experience, photography, printing, paper manufacturing, software design and other related industries to offer a variety of services.

The San Francisco Chapter serves all AIGA members in Northern California. We also have members who affiliate with our chapter who live abroad in Europe, Asia and other parts of the United States. Our membership is located in the following areas:

To better serve our membership, the AIGA SF board of directors meet at a strategic planning retreat each summer. In 2006, the board refined its Mission and Values Statements, which can be Read Here. In 2007, the board assessed our program of work and how we served the membership in the Greater Bay Area.

In this past year, we took an holistic approach to our programming and events. We created our practical seminar series about design topics, “D.Talks,” which focus on the tools designers need to be successful. Each one has sold out. Our complete series highlights the special attributes of in-house creatives, as well as the expanding interactive design community.

By looking at where are members were located, we added programming that was focused on other geographic regions. We added Studio Tours to the North Bay, East Bay, Peninsula and San Jose. Seeing the need for networking in the South Bay, we added Traveling Lounges in the Palo Alto area. In partnership with San Jose State University, we are presenting our new “Small Talks, Big Ideas” lecture series.

For all initiatives, our goal has been to incorporate all design disciplines, while also providing programming to members in all regions. As an example, Inneract Project, our mentoring program for middle school students, currently holds workshops in San Francisco and Emeryville.

To better serve the design students in the Bay Area, we have updated our Enrichment Scholarship program to include a dedicated scholarship to each of the ten Bay Area schools with an affiliated student group.

If you have a question or concern, please email me at or call me at 415-626-6008.

Donald W. Savoie, Executive Director
AIGA San Francisco

Position Overview
The Special Projects Intern will assist our executive director, board members and volunteers in planning various events and programs. This is a part-time internship that will start September 2009 and end either in December 2009 or May 2010. The position will require a flexible time schedule as working hours increase closer to events.

Responsibilities

• Respond to email and phone requests for information
• As assigned, conduct research for website and monthly e-newsletter.
• Research and write copy for online calendars of local events and social websites.
• Assist in proofreading promotional materials.
• Assist with entries for competitions and events
• Perform database entry
• Prepare and implement mailings, acknowledgement letters, etc.
• Assist with pre-event and day of event logistics (may include: space, volunteers, publicity, food, speakers, and other logistics).

Qualifications

• Be able to work independently and be a team player
• Excellent written and verbal communications skills
• Attention to detail
• Experience using social media a plus
• Knowledge of MS Office; knowledge of Photoshop and InDesign a plus
• Blogging experience a plus
• Experience with database systems a plus.

Reports to: Executive Director

Hours
Minimum 7-10 hours per week. Work schedule is flexible, but most work must take place during regular business hours, weekdays between 9:00 a.m. and 5:00 p.m. Preferably available for occasional special events during nights and rare weekend. Timeframe: beginning in September 2009.

Un-paid position. Intern supervisors can authorize academic credit.

AIGA San Francisco does not discriminate in employment and the provision of services on the basis of race, color, creed, religion, national origin, ancestry, age, sex, sexual orientation, gender identity or expression, domestic partner status, marital status, physical or mental disability, AIDS/HIV, height, or weight.

To Apply: email or snail mail cover letter and resume to:
e-mail:

ATTN: Special Projects Internship
Donald W. Savoie
AIGA San Francisco
130 Sutter Street, Suite 600
San Francisco, CA 94104
No phone calls please.