[thelist] Re: Logo design (long)

Viveka Weiley viveka.weiley at gmail.com
Mon Jan 31 10:06:26 CST 2005

On Sun, 30 Jan 2005 17:16:48 -0500, Tara Cleveland
<evolt at taracleveland.com> wrote:
> On 30-Jan-05, at 3:41 AM, Burhan Khalid wrote:
> > Please, please, post this URL when you get it live.  I need to
> > bookmark this to compare with local regulations, and thanks for your
> > very informative post.  If there was ever a "best post" award, you'd
> > get my vote ... and thanks again.

Thanks, but it's not quite there yet, as Tara points out :)

> I'm sorry, I just can't let this go any longer. Especially since people
> seem to be taking it as fact.
> Some of the things that Viveka wrote are just not true. And in some
> cases she's got it dangerously wrong! Copyright laws are not simple.
> They aren't impossible to understand, but they aren't simple either.

I didn't say they were simple - just not rocket science. Mortal humans
can understand them with some effort and research.
> *********
> 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.
> ***********
> No, no and no. Actually it's the opposite. If you are an *employee*
> then your work is owned by your employer. Otherwise, unless the
> copyright is specifically sold in a contract, then you as the
> contractor and author own the copyright to the work.

You're right, I had it entirely backwards. Sorry to the list, and
thanks for the correction. My fingers were moving faster than my brain
there. If it's created in the course of employment, then the rights
are owned by your employer. If you're a contractor and the work has
been commissioned, you own the rights, unless there's a written
contract saying otherwise. At least in Australia, this is an area
where a verbal or implicit contract cuts no mustard; copyright
assignments must be in writing.
In the US there's a special form of commission where you sign a "work
for hire" agreement that gives the employer the rights as if it were a
work for hire; elsewhere you have to draw up a contract to assign the
rights if the client wants them.
> ***************
>   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."
> *************
> This is misleading. Photography is *not* a special case in terms of
> copyright (in general). 

I didn't mean to say that it was a special case *in law*, just that
the standard business practices of photographers are different to the
standard business practice of logo designers.

> Photographers carry around release forms as
> model releases because people have a right to control their own image
> and must release copyright to it. 

Here's a relevant excerpt from Professor Lawrence Lessig's book "Free Culture"
(Main page at http://www.free-culture.cc/ -  the book is Freely
available under a Creative Commons license, so there are remixes in
every format imaginable)

"Courts were asked whether the photographer, amateur or professional,
required permission before he could capture and print whatever image
he wanted. Their answer was no."

There are exceptions for famous people, and considerations of privacy
(but not in public places). I do know that photographers get release
forms though; perhaps they're covering themselves in case their
subject turns out to be famous. Anyone else understand this better?

> An ad you design
> for Acme Hydroponics is not likely to be reused by their competitors or
> someone in another industry.

And in the case of a competitor, if there's a confusing similarity
there could be a case for Passing Off, if a reasonable person would
think that the similar designs meant that the two organisations were
related to each other. This isn't about copyright though, it's more
about fraud. Passing Off can happen without copyright infringement;
for example if you simply made a false claim of association in the
text of an ad.

> *******
> 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:
> **********
> In fact, in most jurisdictions, if you do not hold copyright you
> *cannot* use the work in this way. You must get specific permission to
> do so. In some places you *might* be able to argue it's a moral right -
> but I'm not sure. A good thing to have in your employment contract is
> that you have the right to use works that you have created in
> subsequent portfolios. Rights to pursue your profession are not written
> into most copyright law - however they may be part of employment law or
> case law. 

But as you point out, as the creator you *do* hold copyright; since
you can only assign your rights to a commissioned work by contract
having restraint of trade clauses in contract law is sufficient. I
agree that moral rights are fuzzy, and probably not applicable here.

In Australia, any clause in a contract that would create a restraint
of trade is unenforceable, unless the other side can prove that it's
reasonable and no broader than necessary. The onus of proof is on
them. Then if they can prove that it's reasonable (to both parties),
you can still argue that it's against the public interest.

> Rights to pursue your profession differ dramatically in
> different jurisdictions. Look up your local law.

Good point; and courts may have different ideas of what constitutes a
reasonable and/or necessary restraint of trade.
> Fair dealing and fair use deals with the following types of situations

I wasn't clear enough in separating my clauses. I agree that a
portfolio would probably not be a non-infringing use under Fair
Use/Dealing. It would be more likely to be a permitted use since you
would retain creator's copyrights unless you assigned them in a
contract, and even if you did assign them you would still have the
right not to be restrained in your trade, and it should be plain
enough to argue that:
1. having a portfolio of work is crucial to your professional practice
2. preventing you from using an image in your portfolio does not
protect any legitimate commercial interest of the client.

Also note that I said "I've never heard of anyone being sued for
incorporating images of work in a portfolio", which doesn't mean that
it couldn't happen. However I consider it pretty unlikely, both
because it fails the restraint of trade test and because any damages
would be minuscule as they'd have to demonstrate the extent to which
your portfolio damaged their business, which would in all likelihood
be Not At All.

> ******
> 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.
> ******
> This is partially true, but not very clear. Two joint authors can hold
> copyright to the same work. It's only in quite specific circumstances
> that you would give your client joint authorship copyright instead of
> usage rights. However it's more common to give all copyright (except
> moral rights). If you've given all copyright over your work to your
> client, you cannot then go and use that rollover code again. You must
> retain copyright. You can give your client the right to USE that
> rollover code, but that doesn't mean they own all copyright to it.

I'm used to working with open source/free software, where joint
authorship copyright is the norm, and contributors commonly assign
such a copyright to the maintainer of a work. But you're right, usage
rights for clients is a more usual practice.
Also my statement above saying that copyright is not property was
perhaps a little politically motivated. Copyright itself is treated as
property, but infringement of that copyright is infringement of the
right that you own, rather than a theft of that right. Theft of
copyrights is more the kind of thing that record labels do to

> Just to make it more clear: you can have joint copyright, give full
> copyright or give usage rights. Joint copyright given to a non-author
> would have to be spelled out explicitly. Selling copyright means that
> you no longer own the copyright. Giving usage rights (quite common
> actually) means that you aren't selling all copyrights but only
> specific rights.

I think that's pretty clear.

> If you don't spell out joint authorship or specific usage rights, but
> sell or assign copyright that means that you *may not* use that
> specific rollover code again.

I disagree; I think you may use it again if to do otherwise would
unreasonably restrain your trade.

> Whether you retain moral rights on Work for Hire depends on your
> jurisdiction. The US and UK definitely exclude it. Other jurisdictions
> are different. Canadian law says it resides in the author. YMMV.
> Moral rights also covers attribution - which means that someone can't
> buy your web site design and claim they created it unless you
> specifically waive moral rights. You can also stop someone from
> publicly claiming that you created it if you don't want the work to be
> attributed to you (very useful with some clients that have you create
> hideous work that you'd rather not have attributed to you).
> Moral rights don't cover all things that can be copyrighted in all
> jurisdictions. In the US (AFAIK) moral rights cover visual art only. Go
> check out your local laws for more info.

Thanks, that's quite illuminating.

> Okay, so that's it from me. I haven't looked into patent or trademark
> law so I won't comment on those two issues.

Although I don't agree with all your comments, you did correct one
glaring error and brought some very useful knowledge to the discussion
- thank you! Hopefully with some more input we can turn this into a
useful definitive article.


Viveka Weiley, Karmanaut. http://www.karmanaut.com
For a Free Geospace: http://www.planet-earth.org | http://www.ping.com.au
VR on the Mac: http://www.MacWeb3D.org

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