Legalities 15: Is a Shape Copyrightable? How to Get Appropriate Rights When You Commission Graphic Design

Q. I would like to use the shape of a crest that is being used by let’s say a wine bottler’s company on their label. Can a shape, or crest shape be copyrighted?

A. It depends upon how unique the shape is. Two areas of law might apply: copyright and trademark.

Copyright. Under copyright law, a simple shape, or one that is commonly used, cannot be copyrighted on its own. For example, no one can own exclusive copyright in a square, circle, oval, or diamond, or the common fleur de lis. Such shapes can be included as part of a more complex design, that as a whole is copyrighted, but if you submitted just the outline of a fleur de lis, for example, for copyright registration, it would be rejected. So if the crest you are talking about is relatively simple or popular, copyright probably does not apply. On the other hand, if the crest shape is something unique to this particular wine bottle, it might be eligible for copyright protection. This would most likely be the case if the wine company created the crest shape.

Trademark/dilution. Under trademark and dilution law, the first question would be whether the shape alone (apart from the rest of the artwork comprising the label) is recognized by the public as a brand for that wine. Again, this would depend upon whether the shape is common, or on the other hand, if it is a unique shape created specifically for this wine. It may also depend upon whether the wine maker actively promotes the shape as representing its brand.  For example, National Geographic has trademark and trade dress rights in the simple yellow border that characterizes its magazine covers, apart from the image or words that appear on any particular cover. National Geographic has made the yellow rectangle into a logo which appears on all of its products, including CDs and television programs. So even though it is a simple shape, it has become a recognizable brand.

If the shape is recognizable as a brand, the second question is whether your use of that shape would cause consumer confusion (trademark infringement). If the wine brand is famous, you would also need to consider whether your use of the crest might be actionable as dilution, even if consumers would not confuse you with the wine company.  See Legalities 14 for a more thorough discussion on the standards for trademark infringement and dilution.

Q. I am new to copyrighting, licensing, etc., and I have been sketching a few designs to later print on tee shirts. The only problem is that I am not a graphic designer and would be giving that job to someone else to do. How do I know the graphic designer might not claim it as their own since they are doing the actual design that will be featured on the shirt? And if I commission a graphic designer to create a design for me, what will I need from them to be able to reproduce it on to shirts time and time again?

A. You will need a written contract with the graphic designer, which ensures that you have the rights you need. I see several possibilities to consider:

Copyright authorship

Depending upon the nature of your sketches, you may have copyright in the initial images, even though you are hiring a graphic designer to create the final designs. Copyright protects artistic expression in any form, even preliminary sketches. Particularly if you are sketching ideas for images (as opposed to merely a proposed graphic layout or typographic design), your sketches would be copyrightable artwork. (See Legalities 14 for a more thorough discussion of what copyright covers). 

If the graphic designer utilizes enough of your expression, her work will be either a separate derivative work based on your sketches, or it could be considered a joint work created by both of you. If not, her final designs will be her own separate work. In any event, you don’t want to let the default standards under copyright law dictate what your respective rights are in the final designs. If the designer owns sole copyright in the final designs, the default copyright rules would give you only a nonexclusive license to use them because you have paid her to create them. But she would also have the right to use the designs however she wished, which could include making her own tee shirts in direct competition with you. 

If you and the designer are considered joint authors of the final designs, under the default rules each of you would have the independent right to exploit the designs as you see fit. You would not have a veto over each other’s decisions to use them, which means, again, that she could produce tee shirts in direct competition with you. However, if you are joint authors, each of you would owe the other 50% of your profits from exploiting the designs.

If her work is a separate work, but it is considered a derivative work based on your sketches, the analysis is more complicated. The author of a derivative work needs permission from the owner of the original work to make and exploit the derivative. Because you hired her to create the derivative work, you have given her permission to make it. But the issue will be the scope of that permission. Without a written contract, it would be a factual question open to debate whether you intended that she could use the derivative work herself, or if the permission was limited to creating the work for your own use.

Obviously, none of these default rules are ideal. You don’t get much economic value in designs on tee shirts if your designer can market the same designs in direct competition with you. Fortunately, the law recognizes your right to make your own decisions about copyright ownership by contract. So you can avoid the default rules of copyright law by having a written agreement with the graphic designer that changes the rules for your particular deal.

Contract provisions

Assignment: The best way to solve all of these potential problems regarding ownership, and to ensure that you have the exclusive right to use the final designs, is to include appropriate language in your written contract that has the designer assigning all of her copyright in the final designs to you. That way, whatever copyright she has in the final designs, whether as the only copyright owner, a joint author with you, or as the author of a derivative work, will transfer to you. You will have the only right to use the designs for tee shirts, or whatever else you want to do. She will not be able to do anything more with the final designs unless she gets your permission. 

Here is an example of very comprehensive language for copyright assignment (in this case, you are the “Client,” the graphic designer is “Designer,” and the “Designs” are the final artwork produced by the graphic designer. The final sentence is relevant if the graphic designer has employees or may have other artists work on your project):

Designer hereby assigns to Client all right, title and interest, including without limitation all copyright, trademark and trade dress rights, in and to the Designs in perpetuity and throughout the world. Designer hereby waives any and all moral rights, including the right to identification of authorship or limitation on subsequent modification that Designer has or may have in the Designs, to the fullest extent permitted by law in all jurisdictions. Designer agrees to require any employees or independent contractors who perform design services under this Agreement to assign to Designer all rights and waivers fully consistent with the provisions of this section, and Designer shall provide Client with a copy of each such agreement upon Client’s request.

You’ll see that in addition to “copyright,” this provision mentions trademark and trade dress rights. Generally it’s a good idea to include these in case they apply. Trademark and trade dress rights protect symbols and designs when they indicate the source of a product. In your case, for example, the designs could become significant to consumers as a brand identity for your products. Also, if there’s an argument that the final designs don’t qualify for copyright (for example, if it’s a purely typographical design), this language ensures that you still have exclusive rights to exploit it.

Also, when you obtain all rights by assignment, I recommend as a matter of professional courtesy that you include a license back to the designer ensuring that she retains the right to show the work as part of her portfolio. Here is a typical provision:

Client hereby grants to Designer the nonexclusive, perpetual and worldwide right to display, reproduce and distribute the Designs in Designer’s portfolio and website, and third party trade publications or exhibits, solely for the purpose of promoting or exemplifying Designer’s work, and the right to be credited with authorship of the Designs in connection with such use, provided that Client shall also be credited as the exclusive manufacturer of the products bearing the Designs.

License: As an alternative to copyright assignment, you can agree that the graphic designer will keep her copyright in the final designs, and she can grant you a license to use them for your purposes. In that case, you need to have a conversation about what each of you wants to do with the artwork, and then you need to memorialize that decision very clearly in your contract. 

There are many possible arrangements you could have for sharing the designs under a license arrangement. The scope of the license can include limits on the types of goods, the time frame, the geographic territory, etc., and whether or not you have exclusivity in such categories. For example, you may want an exclusive license to reproduce the designs on tee shirts and other merchandise, but she could sell fine arts prints at the same time. Or you may want to have exclusive rights to use the designs on everything for a limited time frame (e.g., five years), after which you have an option to renew. If you don’t renew, the designer can use them. Or she may give you exclusive rights just for tee shirts for a certain fee, with an option to add other categories of merchandise later for an additional fee. This is a popular choice because it allows you to start small for a smaller expenditure at the outset. If your idea is successful, you would have more resources later to pay for a broader license.

The Graphic Artists Guild Handbook is a good resource for more discussion about negotiating various licensing terms and sample license forms.

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Legalities is a service mark of Linda Joy Kattwinkel. © 2005 Linda Joy Kattwinkel. All Rights Reserved. The information in this column is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel.

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