Legalities #19:
Portfolio Rights
by Linda
Joy Kattwinkel
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.
