“There’s this graphic artist who says I can’t use my design on my website!” yelled my client down the phone, early one Monday morning. He wanted a quick fix, because his website was going on-line the following day. “I’ve paid this bloke all he’s entitled to,” my client went on, “but he’s now saying that the payment wasn’t enough to cover the website.”
I asked my client to fax me copies of any documentation he had with the graphic artist, as I needed to see what the contract between the parties said about copyright, because this was what the artist was really on about.
What is copyright?
Copyright is the right to reproduce one’s own creations and to prevent others from doing so. It covers such things as literary, dramatic and musical works, films and sound recordings, as well as (in our case) artistic works.
My client had commissioned his graphic artist to come up with a new logo and artwork for his restaurant. Examples of the rather elaborate work duly arrived, together with a copy of the contract and a note from my client to say that he had paid the artist for the designs and, so far as he was concerned, he was entitled to use them any way he chose. There was also a copy of a letter from the artist saying that his contract with my client didn’t cover usage of the designs on any website.
Check your contract
With some exceptions, it is the general rule that copyright resides in the author of a work unless it is transferred in writing to another party. From a quick glance at the contract, I realised the artist was correct in what he said, because the contract specified that all copyright in the work remained with the artist, but the client had a licence to use the designs in specific areas for an unlimited period. Those areas involved such things as wine lists, menus and fixed signage on the restaurant premises, but most tellingly, excluded all other forms of advertising or promotion without the designer’s written approval.
I was surprised that my client had signed off on such a restrictive copyright clause and I asked him whether he had he read the contract. He replied that he didn’t think he really needed to, because it was just the “normal sort of contract,” whatever that means!
What followed in my discussion with my client was a steep learning curve for him. I explained that contractors who actually create literary or artistic works, such as graphic artists, architects, draughtsmen and copywriters can’t be treated as ordinary tradesmen, because what they have control over is a very valuable economic right – that is, the right to prevent other people from copying their work without their approval.
Consider how the design work will be used
“But hang on,” my client interjected, “surely the law’s on my side! I paid him his money and it was a big amount. It’s not up to him to tell me what I can’t do with the work!”
I had to demur and said that, unless my client could prove that he was actually misled in some way by the artist, the contract (however fine the print) must stand.
So the big lesson for all of us is that the question of copyright must be adequately dealt with in any contract concerning works in which copyright resides. Copyright infringement cases go to the Federal Court regularly and the Court’s sanctions can be quite punitive. Not only can they grant injunctions preventing use of a particular work, but they can also order damages and legal costs to be paid to an aggrieved party.
If anyone creates any material for you, be it a menu, a video or audio promotion for the restaurant, or a promotional spread in any media, including a website, the ownership of copyright, and your right to use it, must be dealt with up-front.
Independent contractors can retain copyright in a contract
There is a distinction between work created by an employee, where an employer normally owns the copyright, and material commissioned through an independent contractor. The latter was the case with my client and any contract with the graphic artist should have specifically dealt with the areas in which my client wanted to use the designs and logos.
As a lawyer, I am not new to this area of law. I have been honorary solicitor to the Australian Graphic Design Association for a number of years, and I can tell you that disputes between designers and their clients over copyright continue to be the most vexing of all.
Unfortunately, many designers’ contracts don’t address the issue of copyright at all, but even if they don’t, there is always an implied licence that the client has the right to use the material for the purpose intended. But the hard part is proving what that purpose is and what media was contemplated at the time.
Whatever the downside, both parties should know what they’re getting from the start. From a client’s point of view, it’s better to obtain a total assignment of copyright from the author of any work, which will usually involve payment of a larger fee than perhaps first suggested by the author, but it does overcome any future problems about who has copyright in what.
If an author is not prepared to give a total assignment, you have to decide in what areas you want the rights to the work and they should be spelt out in writing, signed by the author.
Regarded by many as one of the most mystic realms of the law, there is nothing particularly difficult about copyright. But it is an area in which a specialist should be consulted, because of the considerable financial ramifications ignorance of it brings.