Legalities 19: Portfolio Rights
Q. I am a graphic designer. My old form contract did not have a licensing or copyright clause. One of my clients under that contract, who is a lawyer, said that she assumed that “all final work is now owned by [her] and may be used, altered or otherwise exploited at [her] discretion.”
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.
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.
- Legalities 10: Making Greeting Cards from Photographs; Copyright for Old Works; Publishing Contracts; Agents
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