[thelist] Re: Logo design...

Viveka Weiley viveka.weiley at gmail.com
Thu Jan 27 20:05:29 CST 2005

There seems to be an incredible amount of confusion about copyrights,
patents and trademarks (often put together under the misnomer of
"intellectual property") in the web design community.

It's not that complicated.

Any graphic design that's published is automatically copyright. If you
did it for a client without a contract saying otherwise, then it's
"work for hire" and they own the rights. This is how almost all
graphic design work is done, across various fields. Photography is a
special case; Photographers often carry around a bevy of release forms
and contracts to ensure that they keep the rights, and only assign
specific usage to their clients. If you're a designer you could try to
do the same, but it would be very unusual and you would lose any
well-informed clients.

Depending on your jurisdiction you will retain "fair use" or "fair
dealing" rights to the work. In the US these are not clearly defined
in statute; however I've never heard of anyone being sued for
incorporating images of work in a portfolio. This is probably because:

No matter what, you cannot be prevented from pursuing your profession.
This exemption is written into the statutes on contract law,
copyright, everything. Even if you have an iron-clad contract that
says you may not use the colour blue in any web designs for the next
ten years, a court would throw it out. If you use a particular piece
of code for all your rollovers, no client can claim that they now own
it as "work for hire" - it's part of your professional toolkit.

So how can they own the copyright to the rollover? Easy - copyright
can subsist in more than one person at once. They hold it (entirely)
and you do too. It's *not* property, it's a right, which can be held
by more than one person at once.

But does anyone really own the copyright to code? Yes, but only to a
particular expression of that code. In most copyright jurisdictions
software code is treated as "literature". So if someone copies a piece
of code exactly and re-uses it, they've infringed the rights-holders'
copyright. However. The *function* of that code is not copyright. If
they read the code, learn from it, and write a new implementation,
then they have not breached your copyright.
This is analogous to you writing an article in  magazine saying "On a
still November evening, the thirteenth, above my uncle's barn, I saw a
total eclipse of the moon". That phrase is now copyright to you;
no-one can copy it (except for use in research, criticism etc, as
authorised by fair use/fair dealing). However they can read it and
then write "There was a total eclipse of the moon on November 13th of
this year". There is no copyright in ideas, only in the specific
expression of those ideas.

There are *patents* - not on ideas, but on specific *implementations*
of ideas. So if you had a patent on some rollover code, and someone
reimplemented it so the code was different but worked exactly the
same, you could sue them in the US. But not in Europe, since software
is still unpatentable there; this may change in the coming year.

Of course merely holding a patent isn't enough; the US patent office
will rubber-stamp just about anything. Your patent also has to hold up
in court. To do that, it must be novel and non-obvious. If there's
prior art (someone else did it before you registered your patent) or
any other practitioner of the art could easily have come up with the
same technique, then you lose your patent the first time it's
competently challenged.

In some jurisdictions there are now Moral Rights over creative works;
these allow creators to stop their clients from doing unspeakable
things to their creations. Work for hire, I'm afraid, doesn't count;
and wrecking your graphic design with bad code is perhaps unfortunate,
but reasonable for them to do. These laws are intended to stop people
buying paintings and setting fire to them, not preventing bad

Now, it's in the client's best interest that they use your designs
well. Design firms try to enforce this by writing long and
comprehensive Design Guides bound up in shiny folders and distributed
to the marketing departments of their clients. These are not enforced
by law; instead they are enforced by institutional inertia, by the
apparent authority of the heavy binder, and by the transfer of
enforcement authority to a powerful group or individual within the
client organisation. Designers don't say "You must follow this guide
or I'll sue you". They say "Here is a useful guide, which will help
you to ensure that the rest of your organisation (or the company you
outsource your next design job to) doesn't screw up all the hard work
we've done together".

Finally, just to be comprehensive, there are trade marks. Simply by
using a mark in trade, you gain some rights to it. This is what the TM
symbol means. If you register a trade mark, you get more rights; this
is what the encircled-R symbol means. If you have a registered trade
mark, you can prevent other people using it in the field of endeavour
in which you registered it. There will be a list of "fields of
endeavour" with checkboxes on the registration form; these are
probably defined by regulation (rather than statute) so that the
trademark office can change them with the times. You can register in
more than one field of endeavour, but you must actually be *using* the
trademark in that field. If you register Giant Octopus web design,
that doesn't stop someone else making Giant Octopus submarines. Unless
you become such a major corporation that you're considered a Famous
Name (this is a real term of law), and you can demonstrate in court
that a reasonable person would assume that Giant Octopus submarines
were made by the web design company. This is why you can't make
Microsoft or Coca-Cola submarines without their permission.

Trademarks have the special quality that they must also be defended.
If another Giant Octopus web design starts up and you don't tell them
to stop infringing your registered trade mark quick smart, then you
could lose it. This is *not* the case for copyrights, and I don't know
if it is for patents. Also, if they're in a jurisdiction where you
haven't registered your trademark, or they're operating in a different
field from you, or they were using the mark in trade (even
unregistered) before you registered your mark, then you're out of
luck. In the US, you could threaten to sue them anyway, and if they're
scared of lawyers then they might cave in. I'm in Australia however,
so if you do this to me I will remind you that under my local law,
baseless threats of trademark infringement are actionable, and if you
don't stop I can sue you for damages to my trade. I would guess that
it's similar in Europe.

Alright, I think I've covered this now, and I'm going to put this up
as a page on my website so that I don't have to keep repeating it :)
Informed comments and corrections are welcomed. Please note that I Am
Not A Lawyer, and I'm certainly not Your Lawyer, and if you want legal
advice then lawyers are not as expensive as you probably think, go and
talk to one, ask someone old for a recommendation because they're sure
to have needed one at some point. But also This Is Not Rocket Science;
you can look the law up yourself and although some terms are used in
unusual ways (e.g. "a consideration" doesn't mean you've considered
something, it means a payment of some sort), the jargon isn't all that



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