May I Promote Work I Did for Someone Else?

by Mark Monlux

I coincidentally received two letters, one from each perspective of a problem. Here are both letters and my response to both:

Dear Mark,

I have a new web design company and one of the jobs I was doing canceled on me. I had already designed and finished the site, so even though the deal fell through, I used it on my web page for promotion. The company sent an email demanding I remove the mock-up site I created from my website. Even if I clearly state the web page was never used, what legal rights do I have to use it as an example of my work?

Do I have to remove the company’s name from the mock-up site? Keep in mind, the website I designed incorporates many elements of their old site (i.e., text, certain photos, etc). I relate it to redesigning anything. For example, if I redesign a car and send the idea to the company, and they reject it, would I never be able to show my redesign to anyone?

I am confused as to what I am allowed to use. I like the website I did, and having the mock-up on my site has helped me to promote my capabilities. Also, this site was done pro bono and had no contracts involved. When the deal fell through, I was at least happy to have the work in my portfolio, even if it wasn’t ultimately used.

Seeking your wise knowledge,
Signed, Confused Designer

Dear Mark,

I’m wondering about these ‘artist guild regulations,’ I understand that an artist has a right to display their work, but if I have an artist who is doing jobs for me and getting paid, doesn’t the end product now belong to me and my client?

We are website developers. An artist who has been working with us for years has stepped up his home office and his website is launched with our company name all through it, and with the websites he developed for us listed as his work.

What advice (besides get another job) can you give me?

Thank you much,
Discontented Developer

Dear Confused Designer and Discontented Developer,

The best way to answer this question is to touch on both copyright and licensing of work.

When a contractor is assigned a project and sets to work, that independent contractor is the originator of the copyright. Ideas are not copyrighted, their expressions however are. And it is the person who is putting that expression into tangible form, the creator, who owns that copyright.

Contractors then license their copyright to the works they have created to their clientele. All rights to the work remain with the creator of the work unless they are signed over. Signed over, as in determined through a written contract. This is why all creators/contractors need to work with written contracts; not to safeguard them, for the law does that, but to safeguard the client with the knowledge of which rights have been obtained. Besides, it never hurts to clarify, especially for heirs.

Another function of contracts is to determine your Kill Fee structure. This is the agreed upon rate of compensation should a contractor start a project and have the client cancel the project before, or even on, completion. Typically, when a kill fee is enacted, all rights being transferred to the client are also killed. Again, this can be different if the contract stipulates an alternative.

The assumption that work done onsite by an independent contractor is Work-for-Hire, and thus belongs to the company, is false. Let me repeat that again: The assumption is false!

Odds are, however, that unless an independent contractor is hired as an employee, with the necessary tax forms and such, and are provided such things as medical and vacation benefits, then that independent contractor is not an employee. However, these are not the only determining factors that could come into play. There are dozens of questions ranging from who controls hours to the equipment used. In doubtful cases, the facts will determine whether or not there is an actual employer-employee relationship. If you want the IRS to determine whether a worker is an employee, file “Form SS-8. Determination of Employee Work Status for purposes of Federal Employment Taxes and Income Tax Withholding, with the District Director. Check out the Guild’s article, “Are You an Employee or Independent Contractor?” which features the IRS’ 20 questions to determine the likelihood that you are an independent contractor.

Creators are not precluded from showing their work. Still, it is well advised for creators to provide clarification in their contract that the creator’s right, including, but not limited to, portfolio, mailers sourcebooks and website, are reserved.

Now, come the issues of brand, trademark, and libel. Can an artist create something which has on it the logo, brand or trademark of a company? The answer is yes, they can create something like that, but they are severely limited as to what they can do with it. For example, if the Harry Potter franchise asked contractors to create examples of artwork of the character Harry Potter, the creator of that specific image could show that specific image as an example of his work. However, he could not market that image in any other way, and certainly couldn’t financially profit from the work, unless it was through an agreement with the Harry Potter franchise.

Copyright law favors the creator. There is a myth, long supported by business wishing to take advantage of creatives, that creatives have little or no rights afforded to them. Yet, more and more creatives/contractors are realizing they are businesses in their own right, and, as such, are familiarizing themselves with laws regarding employment and licensing. Crucial among these is the use of contracts and pre-infringement copyright registration. One of the functions of the Graphic Artists Guild is to help familiarize the marketplace and it members to the rights of graphic artists. And a fantastic tool they have created for this purpose is the Graphic Artists Guild Handbook: Pricing and Ethical Guidelines.

The best resource for copyright is straight from the horse’s mouth at www.copyright.gov.

Laws governing trademark are covered not only on a federal level, but on a state level as well. So be sure to check in with the governing agency within your state.

Likewise with laws governing employment. Be sure to review not only federal, but state, governance. A good place to start with employment requirements is the Internal Revenue Service, found at www.irs.gov.

I hope that helps,

– Mark Monlux

This article was originally published in the Graphic Artists Guild column, Dear Mark. www.markmonlux.com

© 2009 All Dear Mark materials are copyrighted by Mark Monlux, and may not be reproduced in any way without expressed written permission.

DISCLAIMER: To the best of my action or belief the material posted on “Dear Mark” discusses general principles of law in response to issues of concern to the illustration community. Nothing posted by Mark Monlux should be construed to be a substitute for advice of counsel regarding the specific facts and circumstances of an individual case.

Laws and their interpretation differ from jurisdiction to jurisdiction. Legal advice addressing a specific situation should be sought from an attorney duly licensed in the appropriate jurisdiction.