Copyright goes with the work created by an employee or assigned to a client. Can that work legally be shown in a portfolio or on a website?
Graphic designers and other creatives looking for answers to copyright legal questions on the Internet sometimes find bad advice. One reason is that there are some misconceptions about copyright law out there, and they can lead to easily avoidable problems. It may be possible for a creative business lawyer to solve those problems. Even if that is so, however, the solution may well be expensive. Far better to keep such problems out of one’s life or, in this case, out of one’s portfolio.
One such problem is the question of whether it is permissible to show work created for a client in a design portfolio or on a creative website. You may know that if creative work was done as an employee, it is work made for hire, and copyright in it belongs to the employer. And if the work was created as a freelancer or independent studio, copyright in it generally belongs to the party granted those rights under the project agreement (you always have a written agreement, don’t you?).
Usually, that party is the client. Even if you don’t put your project agreement’s in writing, though, the paying client likely has a license to use your creative “implied from conduct indicating the owner’s intent to allow a licensee to use the work.” Rivera v. Méndez & Co., 988 F. Supp. 2d 159, 159 (D. Puerto Rico 2013). “In determining whether an implied license was granted, courts look to various factors, including: (1) whether the licensee requested the work, (2) whether the creator made and delivered that work, and (3) whether the creator intended that the licensee would copy and make use of the work.” Id. (internal quotations and citations omitted).
But does that mean that a client or former employer can prevent use of a designer’s work for marketing and promotion? Unfortunately, knowing whether all rights in that work either belong to an employer from the moment of creation or are assigned to a client by contract does not fully answer the question. As a result, the designer may fear displaying his or her own work. And the client may overreact to that entirely proper display.
One way to clear up the confusion is to include an express promotions clause in the written design agreement. As the AIGA suggests in its Standard Form of Agreement for Design Services, “as a professional courtesy, you will want to be sensitive to client concerns” that your display of “their” work somehow infringes copyright. In other words, even if displaying one’s work is fully within one’s rights, one’s client may have internal concerns that not even a written agreement spelling out those rights will satisfy. It may be necessary to maintaining a good working relationship to ask first even if that is not legally required.
A clause reserving the right to use work for promotional purposes should help address such concerns by making clear that even if the client owns all rights, the creator may nevertheless display the work. He or she may want to show it in, for example, “galleries, design periodicals and other media or exhibits for the purposes of recognition of creative excellence or professional advancement.” Id. Here’s a sample contract clause in the context of a photography agreement for a photographer hired to shoot portraits of a major recording artist:
Photographer may use approved Photographs for non-commercial, non-publication purposes to promote Photographer’s work to persons other than the general public, including promotional cards and portfolios, provided the Photographs are not displayed or transferred over the Internet. Gallery exhibits are subject to Artist’s (or Artist’s representatives) prior written approval in each instance.
What if there is no promotions clause? As noted above, there should be one to increase clarity, improve client understanding (and thereby the client relationship), and prevent disputes. But the copyright infringement defense of fair use would likely cover showing work in a portfolio. Fair use, however, is an aspect of copyright law that is subject to profound misconceptions. Let’s take a brief look at what this legal doctrine means.
Importantly, fair use is not a kind of “free pass” guaranteeing that use of a copyrighted work will avoid a claim of copyright infringement. Believing that fair use means that creatives can “always” use client work even if all rights have been assigned is as incorrect as believing that they have “zero” rights once they turn over final art or files to the client. This is because fair use is not a “stand-alone” right, but a defense to copyright infringement. Whether a use is “fair” is a case-by-case question that can be challenging to resolve.
The answer turns on “four non-exclusive, statutorily provided factors in light of the purposes of copyright.” Bill Graham Archives v. Dorling Kindersley Ltd., 448 F. 3d 605, 608 (2d Cir. 2006) (citing Harper & Row, Pubs, Inc. v. Nation Enters., 471 U.S. 539, 549, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985)). “The factors are: (1) ‘the purpose and character of the use;’ (2) ‘the nature of the copyrighted work;’ (3) ‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole;’ and (4) ‘the effect of the use upon the potential market for or value of the copyrighted work.'” Id. (quoting 17 U.S.C. § 107). You can probably guess that applying any one of those factors to a particular creative work is a complex exercise. Think about applying all of them where the outcome of a copyright infringement lawsuit depends on getting it right.
Using a promotions clause is a way to avoid disputes arising out of that complexity. It’s an easy step to building a more successful design studio or other creative business.
Inspiration Spaceship is a Portland creative law firm advising graphic design firms, freelance designers, and other creatives on copyright and other legal aspects of the creative business. Contact the firm with any questions about this post.