Freelancers' Questions: How to handle a legal threat?
Freelancer’s Question: I've been working as a freelance designer for eight years. During that time, the majority of my work was for one bureau where I had no contract, and no NDA (Non-disclosure agreement). There was only an agreed rate, and I invoiced the company on a weekly basis.
I have since finished the contract and decided to post my personal portfolio online. However I have received threats of legal action unless I take the portfolio down and make no mention of the companies that I did the work for through the bureau. As the designer, I believe that I own the copyright for the artwork that I produced. Does the mere billing of the bureau/client company indicate that I have sold the use of these designs but not the copyright?
Most importantly, can I use the designs in my online portfolio? As it stands, at least according to what the bureau claims, I would have no portfolio to show for 8 years of hard work.
Expert’s Answer: As the author of the designs, you own the copyright, unless you were employed by them or have assigned it.
If you were employed by the bureau and produced the designs as part of your employment, then the bureau would own the copyright. From what you say however, it appears that you were not employed by the company and so this exception should not apply.
It is unusual for a bureau to instruct you without a written agreement dealing with copyright. This does not necessarily have to be in a formal contract; it could be contained in exchanges of correspondence.
One thing to look out for is whether you have 'assigned' the copyright (i.e. agreed to transfer copyright from you to the bureau). In general, an assignment of copyright must be in writing. However, sometimes the courts will decide that there was an implied assignment if works have been produced to order. Courts will decide this based on the history of your dealings with the bureau, written instructions, the nature of the designs and their purpose.
If there has been a valid assignment, then you cannot publish your online portfolio without their permission. Otherwise you should be fine to do so (as long as you are not infringing any other rights such as trade marks).
In their (or their solicitors') letter, they would normally set out the exact grounds on which they claim a right to get you to remove your portfolio. If they have not done so, you should ask them for their precise grounds. It is certainly advisable to obtain specific legal advice on your situation to see whether they can claim an implied assignment.
If they did take legal action, they could ask the court for an injunction (i.e. an order for you to take down your online portfolio and possibly to destroy copies of your designs). They can also claim damages and costs (which could easily run into five figures).
For this reason, if you have any doubt and depending on any legal advice you obtain, it might be advisable to take down your online portfolio until you have had the opportunity to consider their claim fully. If you do this, you should let them know and tell them that this is done on a 'without prejudice' basis without any admission that you have done anything wrong and is simply until you have been able to consider their claim fully.
The expert was Gary Cousins, solicitor and co-founder of Cousins Business Law.
10th November 2010