Legalities 19: Portfolio Rights

Q. I am a graphic designer. My old form contract did not have a licensing or copyright clause. One of my clients under that contract, who is a lawyer, said that she assumed that “all final work is now owned by [her] and may be used, altered or otherwise exploited at [her] discretion.”

Now I have a clause in my new form contract that states:

“LICENSE OF RIGHTS/COPYRIGHT: The Designer transfers to the Client rights to reproduce selected final design. All preliminary, unused, and in-progress artwork remains the property of the Designer. Under U.S. Copyright law, Designer is the owner of all files and artwork created for the Client.”

Of course, since I copied this clause from a fellow designer, who copied it from someone else, I actually am not sure what is entailed in this U.S. Copyright law I’m citing.

My question is this: If I want to grant an unlimited license to a client (for, say, a logo design), then do I have any copyright rights at all? For example, am I free to post the logo on my website (or portfolio) and have a “copyright 2005 (my company name)” line along the bottom, as I do on all of my web pages? Obviously, I have no plans to use the artwork I created for her in any other way for any other client, but I want to make sure I maintain any rights “under U.S. Copyright law.”

Can you please advise on how to protect my rights as a creator of original artwork for a client when I want to grant full usage rights to the client? I am definitely leaving in the part about preliminary, unused, and in-progress artwork, but my question pertains to final, approved artwork.

A. You are on the right track with your new contract clause. However, both you and your lawyer client seem to be confusing the two separate concepts of (1) ownership of tangible media comprising the artwork (“all files and artwork”) and (2) copyright ownership. You are not alone in this confusion. As your question demonstrates, even lawyers who don’t practice copyright law often don’t understand this distinction.

Copyright is the intangible right to control how your artwork is reproduced, including how it is “used, altered or otherwise exploited” (17 U.S.C. Sec. 106). This is separate from owning the physical artwork (17 U.S.C. Sec. 202). Copyright ownership doesn’t necessarily follow along with a transfer of ownership in the tangible artwork. You can give your client all the files and artwork, but still keep copyright ownership yourself. Conversely, you can keep all files and artwork, but still transfer copyright ownership to your client. Under copyright law (17 U.S.C. Sec. 201), you own copyright in your work as soon as you create it, and you can’t transfer that copyright ownership except by a written document signed by you. Such a transfer must explicitly say that you are transferring or assigning “copyright.” Otherwise the copyright stays with you even if you give your client the tangible files and artwork.

If your contract doesn’t explicitly transfer copyright, you will be granting your client a license to reproduce the artwork under your copyright ownership. The scope of the license depends upon what the written contract says, and sometimes what would be reasonable under the circumstances even if the contract is silent on the issue. See Legalities 14 and 15 for more on the various licensing possibilities.