Last Thursday afternoon we were huddled round our laptops, tense with anticipation for our first-ever live Twitter Q+A. Our guest of honor was Californian intellectual property lawyer Leslie Burns, who offered educational suggestions on a number of legal issues relating to design professionals. This came hot on the tail of an article of ours exploring copyright and trademark law that raised a lot of questions around copyright issues. Over the course of an hour, Burns cleared up everything from what it means to work for hire, to the weird but topical quandary of who owns memes, for which we’re forever indebted to her.
Of course, Twitter doesn’t offer much in the way of nuance, and while Burns was clear and to the point in her answers, we wanted to make sure there were no general doubts left in anyone’s mind about who owns the rights to your work, what kinds of contracts you need, and those all-important differences between copyright and trademark. So we asked her to follow up on a selection of topics we discussed and offer more depth and insight into how you can stay protected in the big bad world of professional design.
1. How do you think memes fit into issues of copyright? Are they considered fair use?
Twitter answer: Hard Q but often could be parody/fair use. Still, better to ask permission than forgiveness.
Further explanation: It’s always safest to ask permission to use another’s work, and I encourage it since, even if it is fair use, you may have to defend that use in court, and permission (a license) will give you an almost winner if the use is disputed. Fair use is a complex issue and each case has to be evaluated on its own.
There are no easy rules like “It’s parody so it’s fair use,” so even though memes are likely be fair use, do you really want to have to fight it out?
2. How do you feel about design projects during the hiring process? What recourse do I have if my work appears months later in the employer’s product line?
Twitter answer 1: IMO no one should do spec work 4 many reasons. Maybe recourse under © law or trade secret.
Twitter answer 2: If you do the work, reg. the © B4 giving to client/employer for best protections if work is later used w/o your ok.
Twitter answer 3: Also include delivery memo limiting use w/submission & get it signed/click “ok”
Further explanation: If a prospective employer wants you to do work as some sort of test to see if you should get the job, I’d not want to work for that employer, personally, as it shows an utter lack of trust. But it happens, and if you’re willing to do that, then have a delivery memo that says something to the effect that any material you created and are submitting is copyrighted by you; is being submitted for the sole purpose of reviewing your capabilities for the position; and no rights are granted to the prospective employer to use or reproduce the work. If the employer won’t sign that (or click on an “agree” button, if you’re submitting online), you don’t want to work for that employer—they’re going to use your work and not pay you for it.
3. A professor told me once, “Never take an unpaid internship, unless you have a really good reason!” What makes an unpaid internship legal?
Twitter answer: College credit, mostly. See here.
Further explanation: Unpaid internships are not allowed to replace paid workers, but are often misused to do exactly that. It’s hypocritical to take an unpaid internship, putting someone out of work, and then expect to get paid to do that same work later. Also, by taking an unpaid internship you’ve set your value at zero. Internships are supposed to be learning experiences and the law has specific requirements (listed in the article linked to above), including that you are to get a benefit from it, which is usually in the form of college credit—not just “experience.”
If you’ve graduated, you need a job, not to work for free. Being exploited by doing valuable work without remuneration is not paying your dues, it’s being a sucker.
Now, if you’re a student and you’ll get credit, then internships can be great. You should be highly supervised and get to observe a lot, not just “do.” They give you the chance to see how companies work, what it’s really like in the proverbial trenches, and to make connections for later.
4. I live in Topeka, KS and just saw the Freelance Isn’t Free act pass in NYC. How does it help me? So many deadbeat clients…
Twitter answer: It doesn’t, directly. Make clients pay before delivery of files or at least 50% up-front.
Further explanation: The new NYC law is a good first step and one I hope will be copied all over the U.S. However, if you’re not in NYC you can’t use that law to protect you. Instead, run your business like a business, including having a structured payment like 50% up-front, 50% at the delivery of the files/project or otherwise set to milestones (e.g. 20% down, 20% at each milestone) and having those terms spelled out in your contract.
Also, include in your contract that no rights are transferred until you have received full and timely payment and register your copyrights in the work before handing it over. That way if the work is used, you will (probably) have a good claim for copyright infringement. Mostly, don’t be afraid—it’s your money, you earned it!
5. The Graphics Artist’s Guild and IDSA are pushing this “Small Claims Tribunal.” What is it? How can my studio benefit?
Twitter answer 1: The © Office wants to add process like small claims court for infringement. See here.
Twitter answer 2: You will still need to register your copyrights for small claims system, when/if it becomes law.
Twitter answer 3: Today, you may get a lawyer to take your case on contingency if you reg. Your © anyway.
Further explanation: The small claims process for copyright infringements may help artists bring smaller cases, but honestly I’m not a huge fan. Let’s say I’m skeptically optimistic. Most cases don’t get litigated—most are negotiated to settlement before a complaint is filed and others settle shortly after. If a case is litigated, yes, it can be very costly and then this new system will save everyone money, but it may also limit what you can get for an infringement. Like all things legal, there are tradeoffs. Until we have an actual law, it doesn’t do us much good to speculate on how it will or won’t help your business.
Most of my practice is handling very small infringement matters, pre-litigation, for individual artists, so I know that one can and does bring and settle small infringement matters now, as the law is now. Most of that work I do on a contingency fee basis. I’m not the only lawyer who works like this. We’re not all driving new Porsches (or even old ones).
6. I am torn. I hear designers like Paula Scher say doing free work can be a great for a young designer, but then read articles against “spec work” from orgs like AIGA?
Twitter answer: I disagree w/ Ms. Scher about spec work. Don’t do it. Doesn’t pay off in the long run + drives down value.
Further explanation: I’m not against working for no financial compensation—I am against doing spec work and yes, there is a difference. If a person wants to help an entity (charity or otherwise) and gets the trade-off of creative freedom, then that may be a great thing to do for self-promotion, or even just to help out a cause you believe in. But when an entity, charity or not, demands that people do the work for free (or at reduced rates) and, if you “win” you get paid, that’s just bad business for the creative professional.
When you work for free or for reduced rates, make sure to submit an invoice that reflects your actual rate and then shows the discount.
- Creative fee: $2,500
- License fee: $7,500
- Discount (100%): -$10,000
- Total due: $0
This helps to establish your value so that they know that they are getting something not free of value, but rather free of cost (and may be helpful in court later, to prove up damages if something goes wrong).
7. What does “Intellectual Property” really mean? I have an awesome drawing of a logo on a napkin. If I mail it to myself, is that enough?
Twitter answer 1: IP is a big category for ©, ™, patents, and trade secrets.
Twitter answer 2: For ©, no, mailing it to yourself provides no real protection.
Twitter answer 3: If you mean you invented a real FC, then you need to talk to a patent lawyer.
Further explanation: Intellectual Property is a big overarching category for intangible property including copyrights, patents, trademarks, and the like. I think this question is really asking about something called the “poor man’s copyright” and that’s an old myth. I actually remember my mom doing that—mailing something she wrote to herself and calling it “copyrighted” that way. She was wrong then and she still is. At the most, doing that could be evidence of when you created something, but it doesn’t confer any rights.
A work is copyrighted when it is created—fixed in a tangible (or digital) medium. Take a photo, do a drawing, write an article, record an original song—all copyrighted at that moment. But, to get the full remedies available under the law (especially statutory damages and maybe attorneys’ fees—called “enhanced remedies”), you need to register the copyright with the U.S. Copyright Office and register it before the infringement you want to collect on. That last part is confusing for some people: if you find your work being infringed, then you must register it to file suit in court, but, since you’re registering it after the infringement started, you can’t get the enhanced remedies. So, it’s best to register the work as soon as you can after its creation so that any infringement happens after registration.
8. This job made me sign a “work for hire” agreement. Do they own everything I make now? What about if I want show it online?
Twitter answer 1: Probably yes and, if so, so you MUST get permission to show the work.
Twitter answer 2: A WFH may not be enforceable in some situations but probably you’re toast here. Would be $$ to fight.
Twitter answer 3: Btw, no one “made” you sign–you can say “no.” More ppl who walk away from bad deals, the better.
Twitter answer 4: Offer alternatives like unlim. excl. license w/exception for your self-promo use.
Further explanation: Work-for-hire (WFH) agreements have certain technicalities that must be followed to be binding, but it’s best to assume that if you sign one, you’re signing away the rights to your work. Oh, and yes, they must be signed and signed before the work is made.If you’re not an employee and a client insists on a WFH, think about the value of your work and get paid for it. I suggest trying to convince them to buy a broad license to use the work rather than do a WFH (or an assignment of your copyright).
If you do an assignment of copyright or WFH, insist that in any agreement you get an irrevocable, fully-paid, non-exclusive license to use the work in your self-promotion. That way you can still use the work in your portfolio or marketing.
9. The videos and work our studio creates represents our beliefs and process. Clients often say the look and feel is unique. Can we protect that? The essence or aesthetic.
Twitter answer: Nope. Style, feel, look… not protectable under copyright—only the resulting work is.
Copyright won’t protect the look, feel, style, or process, only the resulting work itself—the tangible expression.
Further explanation: If you have a “secret” methodology to create the work, you may have protections under trade secret law, maybe. Mostly, you probably don’t have any legal protections for those intangibles.
I had a great example recently of the problem creatives face with this. A potential client had a photo that had been “knocked off” by a major company. The photo itself had not been reproduced, but the subject or idea was and the style was similar. In order to win, that photographer would have had to prove that the company had actual access to the original photo and that the company had reproduced enough of the specific elements of the photo to be “substantially similar” to the original. It wasn’t enough that it had copied the photographer’s idea—the company could have independently come up with it, maybe. It’s a frustrating situation for the artist.