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Ask the Expert: Copyright Basics every Designer should know
03/11/21
In this edition of our Ask the Expert, Shawn Tian, Associate at WeirFoulds LLP, shares insight into copyright law in Canada and U.S. and its application for creatives.
Creative work is intellectual property (IP), no different from business property. Your intellectual property is your business; your goal is to make the most of your business.
Distinguish ‘transfer’ vs ‘license’
An IP transfer or assignment, is a change in ownership altogether, like buying a car.
An IP license is a time-limited, conditional and narrow set of rights that the owner grants, like leasing a car.
Like a pan of pizza or a parcel of land, IP can be sold in its entirety or you can parcel off segments and subdivide the IP as you like. For example, a font design can be licensed in multiple, different uses — sometimes separated by territory or the industry or the sector. Licenses can also be structured to scale to a number of users: the same font could be free for personal use while an international advertising campaign would cost astronomically more – license terms are entirely open to negotiation so be mindful of the business context when you review or propose a license for your designs.
Possible license restrictions include: territories where the copyright material can be used, permitted mediums where the copyright material can be used. Conceptually, you could permit a design to be used for commercial purposes only in Canada, Mexico and the U.S., in print medium but not digital or web distribution, but practically, your license terms (and compensation) should appropriately reflect your client’s business and intended use for the design.
Q: Are freelance designers liable to transfer rights of all the work created during an engagement or can they choose to retain rights to preliminary designs/rejected work?
A: There is no default or requirement that a freelance designer must transfer or assign all of the IP from an engagement. You can absolutely negotiate a license of the works instead. It will ultimately be shaped by client's needs and the business terms.
Q: Is it safe to use images from the Internet if you digitally alter them? When is something in the “public domain”?
A: Publicly available =/= Public Domain
‘Public Domain’ is a very specific concept within copyright law that occurs 50 years after the creator of the work has died in Canada and 70 years after in the U.S.
Any image, design, software posted online, whether it’s on Flickr, Artstation, Instagram, Wikipedia, Github, FontSpace, all have license terms (e.g., the Creative Commons license, open-source license). You can save yourself a heap of headache and legal fees if you take the time to review the terms of the underlying license — never assume that the licenses are identical.
Q: Where is the line between being inspired and illegal copying? When is it okay to mimic someone else’s work?
A: Creatives of all stripes struggle with this line-drawing exercise everyday. Take music for example. Is copyright infringement determined by the number of seconds of existing music that is incorporated into the new song? And if so, how many seconds?
Copyright law does not draw the line for us. There is no ‘5 second rule’ to avoid copyright infringement. In the context of sampling, the artist will typically obtain a license from the original songwriter before the record label approves its use — otherwise the record label would take on tremendous risk of an IP infringement claim.
My colleague uses this litmus test:
If the work you produce elicits a response of ‘that looks like …’ that’s usually a warning sign of potential infringement. If the response is ‘that reminds me of …’ that’s a better sign.
Q: What are some crucial points to consider when entering into a copyright or design transfer/license agreement with a client?
A: Clarify the scope of the engagement
Make sure both sides understand:
- What is specifically being transferred or licensed.
- Restrictions that may apply, could be territory, commercial vs personal use, restrictions on yourself that prevent you from performing similar work. Typically, we see creatives restricted from performing similar work for the client’s competitors but you should push back against overly broad or excessive restrictions.
- Consider the client's budget, the timeline of the service, intended use of your work, value of your work and your next best alternatives to pursuing other opportunities instead.
Recognize and respect confidentiality
In our experience, clients are very sensitive to confidentiality (and rightly so). When you prepare a design that is part of a grand unveiling or significant announcement, you may be keen to update and share your portfolio, but you risk jeopardizing the entire project by prematurely revealing details. Pay special attention to your client’s project timelines and always confirm their permission before publishing details about an engagement. Once the project is announced publicly however, you can update your portfolio. Confidentiality varies from project to project, but here are some good habits to develop appropriate confidentiality practices:
- Review the agreement to confirm the terms
- Is there a specific clause that restricts the artist from posting this work in a professional portfolio? Generally, confidentiality includes even your relationship with the client, or the fact that you’ve been engaged to prepare a design or artwork.
- Is there an exclusion that confidentiality obligation does not apply to publicly available information (this is a very standard exception, and you can now appreciate how people conflate publicly available with public domain — different concepts!!). For example, if you designed the nameplate for a mall, the venue has been unveiledand is already open to the public, the client shouldn’t have any concerns. Similar examples include; website design that becomes operational and live; Illustrations for a report or article that becomes published and product design labels for a product that is distributed.
- You are entitled to be credited for your work (see more on moral rights below).
- If the agreement is silent on whether or not you can include the work in a professional portfolio, it doesn’t hurt to confirm with your client so that they are aware. The client may have a genuine rationale to deny you permission, but you can explain that the work is no longer confidential information.
- For future negotiations, in a non-disclosure agreement or the services agreement, the exception for publicly available information is nearly ubiquitous. If the client requires their permission, even after the project is publicly announced, to include your work in a professional portfolio, then they are over-reaching. I find it helpful to persuade your clients by proposing that if they want perpetual secrecy, they can pay for it.
Understand the license terms or permissions for any work you incorporate into a deliverable
If you are preparing a corporate logo design, you are responsible for ensuring that you have the appropriate license for the font that is part of the design. Clients will expect you to be fully responsible for all IP infringement claims that arise from your decision and design, except for any materials or content that is provided to you by the client — that should be their responsibility.
Clarify retained IP rights and moral rights
While clients typically expect a broad set of rights when they engage designers, it is reasonable for creatives to retain ownership of:
- Pre-existing IP not identified in the scope of the agreement and unrelated to the engagement
- General skill or knowledge that is not specific to the engagement (e.g. a painter’s techniques, or skills with commonly used software such as Microsoft Office)
There is a Canadian concept of ‘moral rights’ in copyright that protects the creator’s right to the integrity of the work (i.e. client cannot deface or distort your artwork), the right to be attributed to the work, or to remain anonymous. An excellent example of moral rights is the Eaton Centre goose installation case.
Moral rights cannot be assigned only waived, i.e. you can agree that you will not enforce moral rights against the client for the work you deliver.
Q: When more than one design agency or designers are involved in a project what are best practices to avoid copyright conflict?
A: The most important details to settle upfront is:
- Who has the ownership rights and therefore the decision-making power over transfer or licensing the work?
- Who has decision-making powers and the responsibility to ensure the necessary licenses are in place and setting the scope of the license rights of the final work, e.g. can we place this design on a T-shirt, or where do we procure the necessary licenses for IP incorporated into the work?
The decision-making power also means the designer/agency is taking on the risk of avoiding IP infringement. It’s a classic Spider Man dilemma. Joint ownership of copyright is different between Canada and U.S. laws, speak to an IP lawyer!
Additional Resources
Common copyright myths - For a super handy summary of frequent misunderstandings in copyright, presented in a digestible and entertaining format for lawyers and creatives alike. See: https://copyrightlately.com/the-copyright-myth-project/
Colours and Trademarks - The use of colours is not based in copyright law but within a separate category of intellectual property, trademarks. Before you begin your work, your research into the client should include their competitors. See: https://www.businessinsider.com/colors-that-are-trademarked-2012-9
Font license considerations - Additional factors and considerations to keep in mind for font licenses. See: https://www.monotype.com/font-licensing-hub
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