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Being a good designer requires that you’re aware of the world around you, and sometimes the world around you is full of thieving bastards trying to rip you off. That you, a talented creative practitioner, should have to burden yourself with the tedium of copyright law is one of the great tragedies of the profession, but it’s also essential to ensuring you never wind up in court to defend the veracity of your work.
Finding yourself at the mercy of the courts in the thick of a copyright case is harrowing, particularly for a young designer. “It’s pretty emotionally exhausting and disheartening that this is how I have to spend my time,” says Los Angeles-based illustrator Tuesday Bassen who, earlier this year, became embroiled in a legal battle when Zara took her designs without permission for use on a range of its products.
“I decided to officially take action when I saw a design in person at the mall; nothing had been changed, there was no room for question. This was my artwork and something needed to be done about it. I had my lawyer send a letter to Zara, and while we were waiting for a response, several other stolen pieces of my artwork were discovered at Zara and its subsidiaries.”
It’s not the first time that Zara appears to have stolen the work of other artists. It’s also not the first experience Bassen has had involving the theft of her work. “Hot Topic recently stole a design that has pending copyrights and trademarks filed. We have yet to resolve the case. It’s always soul crushing to see your work stolen, especially as an artist whose entire livelihood depends on compensation for that work.”
While Bassen’s lawyer, Brandon Dorsky, is confident she’ll be able to win her case and secure compensation both for damages to her earnings and the cost of legal fees, she’s already incurred over $2,000 in expenses to get to this stage. “Preparation of a cease and desist letter can cost a few hundred to a few thousand dollars depending on the facts involved and the fees charged by the person or entity providing legal services,” says Dorsky. “Artists should try and find an attorney who will provide the services they need at a rate they can reasonably afford… More seasoned attorneys will likely charge more for their time, but may also provide the services or advisement in less time.”
Easy for a lawyer to say. But for plenty of young designers even a few hundred dollars is a sum they’d struggle to afford. Fortunately there are options for the broke young creative. “There are various legal service organizations that help out artists and small businesses with their legal needs,” says Dorsky. “California Lawyers for the Arts is a great organization that offers services to artists, sometimes on a contingent or pro bono basis. I offer discounted and, in certain circumstances, pro bono or contingency services to artists and small businesses who have had their copyrights, trademarks, or other intellectual property rights used without authorization or compensation.”
But do you know your copyright from your trademark from your intellectual property? Do you own the rights to your work, or have you assigned them away, or is your work legally deemed work made for hire? Is pro bono something you do or don’t want from a lawyer? In many cases just knowing where you stand legally can be confusing, and the language of the law often doesn’t make it any easier. In Bassen’s case Zara tried to refute her claim with a letter suggesting both that she wasn’t famous enough to make a claim, and that her work lacked originality. “It essentially said, because I’m an artist with a ‘small following’ and they’re the largest fast fashion retailer in the world, no one would know it was my work. That kind of bullying might work with another person, but I’m tenacious as hell and it made my blood boil.”
The key line in the letter that so incensed Bassen read: “…the lack of distinctiveness in your client’s purported designs makes it very hard to see how a significant part of the population anywhere in the world would associate the signs with Tuesday Bassen.”
Yet “distinctiveness” has no bearing on copyright. “In U.S. law, that’s a key word that relates to trademark law,” says Shel Perkins, an AIGA member and designer in San Francisco with extensive experience advising designers on copyright law. “This moves us into a different area of confusion. I think a lot of designers, and also a lot of clients, don’t really know the difference between copyright and trademark. They don’t understand that those are separate sets of legal issues.”
So what are the differences? “Copyright is about originality,” says Perkins. “Copyright is statutory protection for original works of authorship. It’s possible that several people working independently will come up with something similar, but it won’t be considered infringement unless you can prove that the later work was actually based on the earlier. You have to prove that the later author had access to the original, and knowingly prepared something that was substantially similar. In the United States the threshold for infringement is substantial similarity. It doesn’t have anything to do with distinctiveness.”
If you can prove someone has copied your work, however simple the design, you’ve got a good case to claim for copyright infringement (so long as your design is not a generic shape or common image, like a diamond or a flag design). In Bassen’s case, so many designs were taken both from her and other designers long after they’d been released online, it was extremely unlikely that the works were just coincidentally similar. Perkins’ verdict? “I’m not a judge, but I think there are some indications that there’s substantial similarity. It’s possible that working independently they would have come up with one or two things that were similar, but it looks like they have prepared dozens of things that are substantially similar. It starts to look like infringement to me.”
Back to this question of distinctiveness and the confusingly separate issue of trademark law. Put simply, there are names and symbols that are used in the marketplace to identify the source of products and services—logos, word marks, tag lines, and trademarks all fall into this category. These words and images have more power in the marketplace if they’re distinctive, so if someone else in the marketplace makes use of similar branding that compromises that distinctiveness, well then you’ve got more trouble on your hands.
To be protected by trademark law, says Perkins, “you have to be the source of that product or service, and you have to be producing a product or a service that is identified by a particular name or symbol.” Starbucks makes coffee, Apple makes phones, and Taco Bell—the clue is in the name. If you, a designer, make a logo or word mark that resembles any of these brands for a client that provides a similar service, then you may be subjecting your client to claims of infringement. While the subtleties of trademark and copyright are too detailed to fully explore here, it’s essential that you have a firm grasp of each, or at least a lawyer who does. What we can cover here are some basics, a set of essentials for young designers working in the commercial world.
1. Register your work
This sounds simple, but when you design something, apply for copyright registration.
There are statutory laws in place that give you a degree of protection as soon as you create your work, but having work registered is a requirement to sue for infringement, and registering before infringement happens will make copyright issues that much easier to resolve, and save you cash. “If you register work prior to an infringement, then the court can award you with your legal fees and statutory damages if they decide the case in your favor,” says Perkins. “If you initiate a lawsuit based on a registration that happened after the infringement, then you won’t be in a position to get statutory damages or legal fees, even if you win.” Registering takes time, but even having your copyright registration pending on a design gives you more protection than if you had none at all.
2. Know who you’re working for
In Tuesday Bassen’s case, work was stolen outright by a third party, but as a freelancer making work for a client, you need to be aware of your rights as a service provider, too.
As an independent contractor, the rights in your work will be determined by your contract. You can license limited usage rights in your work, in which case you keep your copyright. Or you can assign copyright to your client, or you may be creating the work as “work made for hire,” which in both cases means the copyright in your work belongs to the client. The terms under which you part with your copyright are entirely yours to negotiate, but once an agreement has been reached you may need the client’s permission to use your designs again.
In some cases, especially when you give your client a license for limited usage rights, you still own the rights to all the files, and are under no obligation to pass editable files on to your client. If you have signed a work made for hire contract, however, the client owns all of your work, including your files and preliminary alternate designs that were not selected for development. If your contract is for an assignment of copyright, you can limit that assignment to the final designs. Regardless of what rights you’ve given your client, you should ensure that you retain the rights to show the work as your own in your portfolio. In some cases a client will wish to keep your existence anonymous, in which case you ought to charge a higher fee, but otherwise you should expect to be able to show client work in your portfolio.
3. Be aware of trademark issues
When you are designing logos or images that may be used for branding, be aware that your designs could infringe someone else’s trademark rights, even if you didn’t intentionally copy their brand. Have your client agree to conduct appropriate legal trademark screening searches to make sure this won’t be a problem before they implement your branding designs.
4. Be aware of fair use
There are a few instances in which a work can be used by others without the copyright owner’s permission, including by you, a designer. This includes some types of non-commercial and educational uses as well as parodies. It also includes work that’s deemed to be “transformative,” in which the message, aesthetics, insight, and understanding of a work is changed. This is usually of concern only when your work is appropriated by someone else in an artistic work. It’s extremely unlikely that a designer could use copyrighted work in a commercial context and make the case for fair use.
5. Read these
There’s plenty of resources out there that go into the intricacies of design’s many and varied legal issues. They’re not much fun, but they’ll keep you protected and out of trouble.
• AIGA Guide to Copyright
• AIGA Standard Form of Agreement for Design Services
• Copyright Basics for Graphic Designers
• Intellectual Property
• Intellectual Property: What does “Work for Hire” Mean for Designers?
• Is it True that Copyright Doesn’t Protect Graphic Design?
• Talent Is Not Enough: Business Secrets for Designers
• Rights, Wrongs and The Law: An Interview with Frank Martinez
• Graphic Artists Guild, Small Claims Tribunal
• Lawyers for the Creative Arts
6. Lawyer up
If you don’t want to read all that, get a lawyer who already has, and free up your time to practice design instead of the law.