My Improper Trade Practices
I thought you might enjoy this letter I received from some lawyer in Nebraska. I have been sitting on this post for about a week as I debated how much trouble I wanted to get into. I have come to the conclusion that as good as it would feel to make this corporation look foolish, I am going to play it safe and “protect” their identity by referring to them as “X Corporation.” This letter comes in the context of work shown in my online portfolio which was never used by the corporation. Other than changing the names, here is the letter without any further editing:
Re: X Corporation unauthorized use of trademark
Dear Mr. Hanft:
Our office represents X Corporation and our client has discovered that you are utilizing the trademark of X Corporation and materials, including photographs that are the work product of X Corporation.
Since the work product and the trademark of X Corporation are subject to protection under Federal Law, I would ask that you furnish me with a copy of any written permission that you may have received from anyone associated with X Corporation. A copy of that written permission must be furnished to me within ten (10) days of the date of your receipt of this letter.
In the event that you do not have written permission to utilize the trademark and work product of X Corporation, all such items must immediately be removed from your website. Absent proof of any written permission to utilize the trademark and work product of X Corporation, I will require written confirmation that all such materials have been removed from your your website and that they are not otherwise being utilized by you. This confirmation should also be provided within ten (10) days from the date of your receipt of this letter.
In any event, the presentation contained in your website presents X Corporation in an unfavorable manner, and, in the event that X Corporation suffers any damage to its reputation as a result of the editorialized presentation contained in your website, you are hereby placed on notice that this may result in a claim being initiated against you to recover any damages that might be suffered by X Corporation.
If you are unable to produce specific authorization for the use of the X Corporation trademark, logo and work product, I will advise my client to pursue injunctive relief and seek recovery of monetary losses that it might suffer as a result of your improper trade practices.
I await your prompt reply.
Very truly yours,
LEININGER, SMITH, AND FIVE, OTHER NAMES, THAT ARE, PRINTED IN, ALL CAPS
This problem came to the surface, no doubt, because a casual entry in my design portfolio took sixth place in a Google search for the company’s name. I thought I was honest in my description of the project, but you can judge for yourself. The irony is that I worked hard to improve the corporation’s identity only to have my work ignored and unused, Then after missing the opportunity to improve their identity, they threaten the person who was trying to help them in the first place.
Needless to say, I have removed the work from my website and am evaluating my rights in regard to the work in question. I am sure we could all have a great time critiquing the logo that they are so passionately defending, but that doesn’t do anybody any good. What I would like to do is start a discussion that rises above my pathetic situation and helps designers understand the rights they have in regard to the work they create. Do you know your rights? Have you had a client request that you not use your own work for self promotion? Have you had to remove a trademark from your website? Has someone taken credit for your design work (I just read about a design theft story on Airbag) forcing you to ask them to remove it from their website? Do you have advice for designers so that they don’t end up with a similar letter? Do you hate lawyers? Do you hate designers? Do you think I am a wuss for removing the work from my portfolio and not telling you who the corporation is? Would you ever click on a Google ad for a lawyer on a site about graphic design? Your thoughts are welcome.
October 2nd, 2006 at 10:42 pm
I think Derek Zoolander said it best, “Do you understand that the world does not revolve around you and your do whatever it takes, ruin as many people’s lives, so long as you can make a name for yourself as an investigatory journalist, no matter how many friends you lose or people you leave dead and bloodied along the way, just so long so you can make a name for yourself as an investigatory journalist, no matter how many friends you lose or people you leave dead and bloodied and dying along the way? ”
October 3rd, 2006 at 12:08 am
I did have a similar experience once. I had posted a brand I was working on in the Critique section of Typophile. I, by some craziness, titled the post with the company name. I had informed the client that I was posting to a designer site to get feedback and it just flew over their head. Then – never underestimate a CEOs penchant for egogoogling their company – I was called onto the carpet for releasing their entire brand to the world and all of their competitors. In my post (intended for designer eyes only) I was frank about my assessment of their old logo. This also did nothing to make them feel great about the post. The long and short of it is that we should do three things.
Make part of your contract with a customer the understanding that you will have rights to use the work for self promotion.
Also when posting, remember it is the world wide web and as such are open to the eyes of many more than you might think. Avoid obvious footprints that will lead you into trouble.
Finally, remember that when you do work for a client, you in effect represent them to the world. All your communication should reflect that. Anything else will eventually come back to haunt you.
I have posted “unused” work before, but I am careful in that instance to not reference the actual client. That way I can present my work without offense. If the work was not used, they have no claim on the mark itself (well perhaps if they actually paid for it then decided to sit on it, but that would be a tricky slope).
For my part, in the end, I voluntarily removed the post from the site and have maintained a strong relationship with the client. In fact I am lookingforward to the official brand launch in January just so I can show it off again!
October 3rd, 2006 at 1:03 am
As HughFire pointed out, this is a contractual issue. Unless you specifically signed off on a full rights transfer to the client, then you certainly do have the right to use the work for self promotion.
This is the clause I have in my Work Agreement, that every client signs before work begins:
Ownership of Artwork
Dragulescu Studio retains ownership of all original artwork, whether preliminary or final. No use of same shall be made, nor any ideas obtained therefrom used, except upon compensation to be determined by Dragulescu
Studio, and not expressly identified and included in the selling price. The client shall return such artwork within thirty (30) days of use. In the case of digital files, the client shall receive and retain ownership of final and printer ready artwork once the invoice has been paid in full.
Dragulescu Studio retains the right to use the completed project and any preliminary designs for the purpose of design competitions, future publications on design, educational purposes, and marketing materials. Where applicable the client will be given any necessary credit for usage of the project elements.
This is pretty standard boilerplate stuff. Optionally, this could be called a “rights transfer” if it discusses the actual giving of full ownership of somethign to a client, or a “licensing agreement” if you’re granting them usage on a limited basis.
The kicker is that if you haven’t signed your name to any of these aformentioned things, then you are still the owner of that logo, and they are the ones who aren’t allowed to use it without your permission.
The design industry has become too reliant on verbal agreements, in my opinion. It’s always hard to fight in court what is not on paper, so a good Work Agreement can really save the day.
October 3rd, 2006 at 2:51 am
I was working/employed with a client and blogged about design engagements that the client was getting from customers. It brought loads of eyeballs to the company website that was otherwise unknown on the internet – the search for the company name showed my website as the first search result on Google and their company website was on page three of the results. They totally lost it and asked me to get rid of the company name from everywhere on my blog and website. I did. And I quit.
October 3rd, 2006 at 6:36 am
why are they acting like THEY own the design? they didn’t even use it =P
October 3rd, 2006 at 6:57 am
I was working/employed with a client and blogged about design engagements that the client was getting from customers……And I quit.
You probably should have been fired. Broadcasting your agency’s business development process to the world is a very bad idea and could cause harm to the agency and its potential and/or current clients.
The proliferation of the web, blogging, and the joy of self-publication has made people free-speech mad. Yes, we are allowed to say many things because of the first amendment. It does not, however, give us the right to malign any or all companies without repercussions. It’s why you cannot yell “fire” in a crowded moviehouse and not be immune from prosecution.
Use common sense before you post something on the web that might be negatively interpreted. Before shrugging any worries off to free-speech protection, think about what actions might be a result of your post.
Adrian, you probably did the right thing in removing the company name. I don’t think there’s anything wrong with posting rejected work (usually), but you probably did go too far in your comments about the client.
October 3rd, 2006 at 7:06 am
I think this is a case where XCorp, not Adrian, is acting unethically. I don’t know the ins and outs of your legal situation (contracts signed, rights management, etc.), but looking beyond that, it’s quite obvious to me that big bad XCorp is trying to use their high priced lawyers to push you into doing something you don’t legally have to do. For most people, the threat of litigation is enough to comply to whatever the C&D letter says. My advice, if you still maintain a relationship with XCorp (I admittedly didn’t read all of the case study yet), then call a meeting with whomever is in charge, and discuss this with them. If, however, you don’t care if you get work from them again (which, I’m assuming, is closer to the truth), then I say plaster that logo all over your site. Post it here. Post it on some random forums. Show it to anyone that you can, and always follow it up with the letter they sent you, your case study, and some commentary on why you feel that it’s your -RIGHT- to display that work. It will stand as a reference point for all designers that get bullied into not using their own work to show what they’re capable of.
This kind of reminds me of how Universal Pictures attempted to take Nintendo to court back in the early 80s over the name “Donkey Kong.” Universal claimed that Nintendo was infringing on their IP by using “Kong” in the name. Hiroshi Yamauchi, then president of Nintendo, didn’t believe he was in violation of anything, so a legal battle ensued. Turns out, Universal didn’t even own the rights to the name King Kong, let alone any variants of it like Donkey Kong. So, it IS possible for the little guy to win in this situation, as Nintendo barely had their feet wet at this point. Keep that in mind.
October 3rd, 2006 at 8:00 am
I honestly don’t think this has any merit. What trademark was being infringed upon? A logo they didn’t use? However, it sounds as if this type of action isn’t surprising given the previous experience with the x-corporation. And I’m sure it was more of a retaliation against what they perceived as being defamed on the internet. I guess it’s bad PR to let the design community know what a pain in the ass you are to work with. This only furthers my notion that only a handful of clients really “get it.” For the majority, the big picture is lost in an ego that prevents them from putting the trust in those people that can truly help them. Or maybe I’m just bitter – I haven’t had my coffee yet.
October 3rd, 2006 at 8:25 am
The way I see it the Copyright law of 1976 states that if you did the work…it is yours, in less otherwise negotiated.
“According to the Copyright Law of 1976, the rights to all design and art work, including but not limited to photography and or illustration created by independent photographers or illustrators retained by the designer, or purchased from a stock agency on your behalf, remain with the individual designer, artist, photographer or illustrator. Unless a purchase of “All Rights‚Äù (A Buyout) is negotiated with the designer and/or his/her authorized representative, the client may not use or reproduce the design or the images therein for a purpose other than the one(s) originally stipulated.”
Therefore it is yours to put on your site and do whatever you wish with it.
October 3rd, 2006 at 9:51 am
Many many moons ago I created an unsolicited website redesign for a company that customizes cars, strictly as an exercise for myself (I’d used it to learn quite a bit about javascript). I was pretty proud of it and added it to my portfolio.
Over the years I forgot about it. I haven’t really used my online portfolio in nearly a decade. A few years ago I befriended the owner and did some graphic design work for him. Last year he e-mailed me to say that people were finding my version of his site on Google. The biggest problem he had was that the info was horribly out of date and it was causing a fair bit of confusion. But the design was seriously dated at that point so I gladly took it down. And this year he gave me more graphic design work.
Luckily no lawyers were involved.
October 3rd, 2006 at 12:27 pm
In an unrelated comment I saw Dxxxxxxd Pxxxxxxs Corporation (x removed) logo and website online and wondered if anyone had any comments on it. I’m still a student and learning, but I found criqueting other work helps in my own.
October 3rd, 2006 at 1:00 pm
Oh man, this post is going to turn me into an evil editor. What’s worse: editing the comments of my loyal readers, or getting in deeper trouble with a faceless corporation? Lose, lose. I guess I asked for it, though.
October 3rd, 2006 at 2:01 pm
Bobby Dragulescu, et al:
I will caution you VERY strongly about taking legal advice from anyone, including myself, on design blogs.
It’s fascinating to watch a bunch of designers sit around talking about “I made it, of course it’s mine!” But every IP attorney I’ve ever talked with will tell you otherwise; first, if you were under anyone’s employ when you designed something, THEY own it. Secondly, if the firm you work for, own or operate produced design for pay for a client without any written contract, the client has a very strong argument that THEY own the finshed work. It’s called “work for hire,” and my understanding of the law is that if you work under the directon of a company (client) who is paing you money, you can be considered “in the employ” of that client. Copyright law allows for an automatic transfer of rights to the employer in “work for hire” situations. Short story: be very careful before you run around posting/using design work with an “of course it’s mine attitude.” It might not be.
Then again, you’ll probably be better off consulting an actual attorney.
p.s. Adrian, I think you did the right thing by taking down the design work of X Corp. It’s highly likely that they DO own it. However, unless you’re being untruthful (or divulging information you agreed to keep confidential) my opinion is that you could use their name and say anything you’d like about the process of working with them.
October 3rd, 2006 at 6:29 pm
Sounds to me like your post is unprofessional. Who writes “I would be lying to you if I didn’t say this was one of the most frustrating projects I have ever worked on.” as the opening sentence?!
Potential clients are viewing your site and you want them to see this? It’s not your job to belittle a client; it’s your job to help facilitate their needs. If you didn’t like the job, don’t put it in your portfolio nontheless bitch about it on your website! If someone asks you about that job, you need to be able to talk about it objectively and not say it was one of the most frustrating projects ever. Potential clients don’t look at that as a positive and might not hire you because of it.
October 3rd, 2006 at 8:08 pm
Damien, apparently your definition of “professional” is different from mine. While you might lie about your work or try to hide it from people, I choose to be honest and take pride in my work – even when it doesn’t work out. If a client wants to disregard my advice and my work, that’s fine, but I am not going to pretend that the mediocrity they are demanding is a good idea. If someone is going to hire me, they know I am not going to sugarcoat what I believe. If they don’t like my honesty, there are plenty “Damiens” that will gladly volunteer to pretend that crap doesn’t stink. I can give you the contact info for X-corp if you want. They might be just the client you are looking for.
October 4th, 2006 at 4:36 am
“I made it” counts for precisely nothing here.
What you, and yes the client also, can do with the work, used or not is defined by the contract, and nothing else. If there is no contract-which is just stupid on both sides of the equation-then some of these assumptions start(and only start) to come into play. I’ve dealt with one where the client gained full ownership of the design in perpetuity, including all developmental work up to final design(so no recycling unused stuff), and we had to get permission from them to even show it in our portfolio, along with a bunch of other rules about not making their logo or text mentions of them any larger than any other client’s, etc.
(The practical, rather than legal, reality here is that it’s not that likely they’re going to say no to you, but this falls into a similar realm as copyright enforcement, where you have to put these things in place, or risk losing control of your property by simple dilution.)
What I find curious is that Adrian has yet to clarify this point. Is there a contract? And what does it say regarding your usage rights? There’s no discussion to be had without those questions being answered.
October 4th, 2006 at 10:09 am
Su, you are correct that I haven’t given any details about any contracts or agreements. I am evaluating my rights, and probably won’t make that part of the story public. Along the lines of what Drew said, I am not looking for legal advice here although I really appreciate everybody’s comments.
October 4th, 2006 at 10:34 am
Fair enough. My comment was directed more at the people leaping to the conclusion that the work belongs to the designer in absence of proper evidence/documentation being presented. I don’t really disagree with the sentiment, and kinda wish it were true, but it just isn’t.
October 4th, 2006 at 4:55 pm
This, and other potential problems, are why I never discuss project specifics online, even the successful ones. My own online portfolio is very spare, just a taste to intrigue and give some context to my skills and range. I prefer to give actual explanations in person, so I don’t have to censor myself (other than in ways dictated by common sense professionalism).
As for the legal stuff, my understanding is that you stipulate it in the contract, or you pretty much have no rights whatsoever.
October 4th, 2006 at 9:46 pm
X Corporation=bitches!
Sue me!!
R/
October 5th, 2006 at 9:15 am
Adrian.
After reading the following in the case study of your personnal design portfolio I have a question:
“I think we were paid for the job…” and “It would be easy to blame the client, but the truth is that the account was poorly managed.”
Was this a freelance gig? Or was this a project thru your regular 9-5 job?
October 5th, 2006 at 11:54 am
Steve, you hit the nail on the head. It was for my 9-5 job. That is why I didn’t know the details of the contract and can’t share that info publicly. It is also why I am not putting up a bigger stink about the whole situation, since I still work for the agency. I like my job and have no reason to make waves, so I am trying to do the right thing. You are also right to read between the lines that my frustration with the project wasn’t just with the client, it was also with my team. Maybe I should have put a more positive spin on it and said it was a learning experience for everyone involved.
October 5th, 2006 at 5:37 pm
Adrian.
Thanks for the response. FWIW, I think you are making the right call.
Like you, I have been in the agency trenches for many years, albeit on the account service side, and have made my share of mistakes handling client issues. I’ve also worked with some exceptionally talented creative/art directors (like you) and with each campaign developed there is a piece of them in the work. The fact that you had a such visceral reaction when the client neglected to use your work is a good thing. It means you care about the quality of the work and that’s a good thing.
Keep pitching ideas that are better than the client deserves.
October 5th, 2006 at 9:10 pm
Live and learn. And get a lawyer. (Do thier Web site or stationery, too.
Just keep doing good design. Some people can’t understand it. Enlightened ones can.
It is what it is.
R/
October 6th, 2006 at 1:50 pm
that thing about “being a wuss” is not entirely correct, I guess… haha sorry, just kidding… Fortunatelly I never had been in a situation like that, but some friends of mine had their work stolen several times… that is (I think) the worst thing that could happen to a designer…
October 6th, 2006 at 1:50 pm
that thing about “being a wuss” is not entirely correct, I guess… haha sorry, just kidding… Fortunatelly I never had been in a situation like that, but some friends of mine had their work stolen several times… that is (I think) the worst thing that could happen to a designer…
October 9th, 2006 at 12:01 pm
For the curious Google has a great page caching feature, that can be quite revealing…
Adrian: is the slight logo variation on their map page anything similar to what you designed for them?
November 1st, 2006 at 11:32 pm
I may have misunderstood this, but is this not a trademark dispute rather than a copyright one? IANAL (and this is not legal advice), but regardless of any rights transfer made in respect of the work’s copyright, if that work was asserted as being a trademark by that company (through registration, or use in the marketplace) then they do have certain rights to control it’s use.
However, as far as i know, trademark infringement occurs when using a trademark to market a product or service which is identical or sufficiently similar to the product marketed by the company who ‘owns’ the trademark. Since you were not using X-company’s logo to market pipes or other plumbing products, I’d say that you might have a pretty good defense from this point of view.
In addition, the right of a trademark holder to enforce a trademark can depend upon their active use of that trademark in the marketplace. If X-company never used your logo, they might not have trademark rights in it at all.
If, however, this is a case of copyright(rather than trademark) infringement, you should check firstly whether you transferred your rights in the work to X-company in your contract with them. If not, then they haven’t got a leg to stand on from a copyright point of view, as you hold the copyright. If you did transfer the rights, however, and if you are in the US (but not in the UK and I don’t know about any other jurisdictions), you’d probably have a pretty good defense under the standard Fair Use limitations and exceptions.
It sounds like you’ve been unfairly treated, so I’d personally reccomend getting in touch with a lawyer and getting this thoroughly checked out. (Once again, I am not a lawyer, and this is not legal advice)
Good luck!