Q. My graphic design firm has been selected to have our work appear in two design publications. We would like to show a piece that we designed but never produced. The images are package designs for toiletries that include the client name, the brand name of the product and a photograph of a plant or flower to denote the scent. The designer is no longer with us but I believe he went through some old stock books and found the images of the plants which we then superimposed on the boxes.

There is an interesting back story re: why our designs weren’t chosen. The client has pretty mundane packaging. Our designs were great - one of the most beautiful things we've ever done. Our contact said our designs were too striking and would overshadow their other premium product packaging. The client’s marketing director then asked our designer to come to a meeting with the client’s management and in-house design team to look at some dumbed down designs more in keeping with the rest of the line. The management people weren't too impressed. So our designer brought out our original beautiful designs. This ended up causing a ruckus. Management really liked our designs, but it started some sort of internal political battle. We think the marketing director may be carrying a grudge about this.

A. There is a legal issue re using the photos on comps. Usually it comes up when the image of one photographer’s work was used on the comps, and then another photographer is hired to do the actual shots. In that situation the main claim is that the final art infringes the original photographer’s work. But technically, it is also infringement to use the original photos on comps without permission. You have copied them and traded on them commercially, that is, to solicit work, so it is not a fair use. (The same holds true for comp use of illustration.) Moreover, if you show the comps in a design publication, that becomes another publication and thus a new use of the photographs. The trade publication may be fair use, however, because it is editorial commentary on developments in the field of design, rather than a direct commercial use.

Either the photographer or a stock photo company manages the rights in the photographs (we’ll say the stock house for purposes of this answer). The stock house might offer them on a royalty-free, one-time fee basis, or on a royalty-based license. In any event, the stock house would be entitled to its typical fee for the use you have made of its photos. If the stock house sees your piece in the design publications, it could raise a legal claim of infringement. The damages would be measured by the license fee it would have charged for the comp use - which could be pretty minimal, and perhaps an additional fee for the publication (although, as noted above, there is an argument that publication in a trade journal is a fair use, and thus would not require a separate fee.) The stock house would not be entitled to your profits because you didn't make any, except that it could go after a portion of the fees, if any, you received for creating the comps.

So if the photographer or stock house objects, you should be able to solve it with a monetary payment. Of course, there's always the outside chance that the copyright owner will want to litigate. As a business decision, it might be worth that risk for the benefits of showing your work.

You should also think about the client - will it object to having its name and the product brand shown in the comps? Did you have an agreement with the client about who owns your work product for unutilized ideas, and whether you have portfolio rights? Even if you retained copyright, there’s a possible argument that your reproduction of the comps with the client’s identity and brand for self-promotion violates the client’s trademark rights, because you could be suggesting an association between your firm and the client. Normally this part would be easy to solve by just asking the client for permission.  However, under these circumstances, it sounds like the marketing director might be upset that your designs have been made public. If you think getting permission would be problematic, you should change the client name on the images to a made-up brand.  That way there's no chance for the client to argue that you don't have the right to show them.