So you want a new logo for your business. That’s great! Instead of hiring a design firm, you decide to hold a contest so amateur designers near and far can propose logos. Maybe you’re even going through a website, such as 99designs.com. It seems like a win-win situation: your company gets a plethora of ideas that you wouldn’t get with one designer and amateur graphic artists get a piece for their portfolio and a chance at major exposure! What could go wrong?
Actually, a lot.
While at a very superficial level design contests seem like a good idea, any analysis or evaluation will start to turn any legal counsel’s stomach. Here are just a few issues:
1. It’s probably an illegal contest.
As profiled by my colleague Keith Finch in his latest article, running a contest opens a huge can of worms. And guess what? Those rules apply to ANY contest, including one on logo design. Things get very complicated, especially if you’re working with a contest spanning multiple jurisdictions, as internet logo contests usually do. But wouldn’t a website whose sole purpose is to run logo contests do all of this for its users? I’m afraid not.
To run a contest legally, you’ll need to shell out thousands in legal fees for correct “Terms and Conditions” written in exactly the right size and type of font required by the contest-governing overlords; you’ll have to put up cash bonds in Florida and New York; you’ll need to obey state and national consumer gaming laws meant to protect consumers from not-so-honest award disbursement, and more. My hunch is that it’s more financially prudent to hire two or three designers.
2. You [probably] won’t own the copyright.
As lawyers, we see this ALL THE TIME: A company hires a designer/ design firm to make its logo or rework its branding. The designer creates an awesome logo. The company is thrilled. Both parties go on their merry way.
The company doesn’t own the logo.
But the company paid for it! Shouldn’t that mean it’s a work made for hire and the copyright automatically belongs to the company?
Actually, it doesn’t. A work made for hire only applies when the designer is an employee of the company. An independent contractor or freelancer is NOT. This situation is legally identical to picking a logo from a design contest. The designer is not an employee—and arguably not even an independent contractor—and therefore no transfer of copyright occurs. In this situation, you need a separate well-drafted copyright transfer agreement, which doesn’t come with most logo competitions.
This means that every time you use, print, copy, reproduce, or alter that logo, you’re committing copyright infringement. Why does this matter? Because at any time, that designer could decide he wants to invoke his rights and prevent you from using that design, and in essence hold you captive until you pay some sort of ransom fee. If he’s registered the copyright in the mark, there are even treble damages and attorneys fees you could have to pay. It’s big money that could cause a huge headache, just for forgetting to get a copyright transfer agreement signed.
3. The design could be a copy.
When we draft design agreements, we make sure there is a portion of the contract that ensures the deliverables are original, non-infringing works. This is because a client using the designs could actually be held responsible for an infringing logo created by a designer. This is a huge problem on logo contest sites, and there is no way to ensure localized design contests don’t run afoul of these rules as well.
We like to add indemnification clauses to our client’s designer agreements that make the designer responsible for indemnifying (e.g. paying for the cost) our clients’ legal fees or costs of defending a suit for copyright infringement if the deliverable’s design is misappropriated.
Even a quick look at design contests presents myriad issues. You’ll get more bang for your buck hiring one or even two designers to produce and design deliverables you need. If you do decide to run a contest, make sure you talk to your friendly neighborhood attorneys who can ensure you’re not slapped with fines or even possible jail time for running an illegal lottery under federal and state guidelines. We’ll help you out!
The yellow arches, the green and white mermaid, the white script on the red can. You probably can match these descriptions to the brand — and this immediate recognition points to brand and logo strength. Oftentimes, in fact, your logo is your brand. But is it really your logo? In fully developing this core part of their consumer identity, many businesses miss some basic steps they should take to avoid a situation where logo ownership is in jeopardy.
Part of determining who owns the interest in the logo design itself depends on the capacity in which the designer completes the logo development. Most people and businesses look to hire a graphic designer for a one-time project-based job for which they intend to pay that designer a lump sum. Upon making payment, that person or business then owns the work, right? Nope. That’s a copywrong. You see, simply making payment for the logo doesn’t confirm or clear up ownership or associated rights (and limitations).
One step in determining ownership of the logo developed by the designer is to ask whether it is a work made for hire. A work made for hire, under The Copyright Act, is defined as either “(a) a work prepared by an employee within the scope of his or her employment”, or (b) a specially commissioned work (as in the case of a graphic designer hired for a discrete project) in a number of enumerated categories if reflected in a written agreement signed by both parties. If the design work was not completed by an employee, then the work is potentially a work made for hire, but only if the specially commissioned work falls into one of the enumerated categories and the parties have signed a written agreement stating that the work will be considered a work made for hire. If the work is not a work made for hire at all, as with an independent contractor whose specially commissioned work doesn’t fall into one of the categories required under the Act, an explicit written copyright transfer agreement is required to transfer ownership in the logo design from the designer to the person or business for whom it was created.
Many start ups begin with limited finances, forcing them to consider what they can and cannot afford at any given stage in development. While most small businesses and start ups question whether they can afford to pursue trademark registration as part of their brand development, what they cannot afford is to wind up on the wrong side of litigation for failing to fully explore on whose turf they may inadvertently be treading. It is easy for businesses of all sizes, whether starting up, re-branding, or expanding their growth into other areas of development, to unwittingly adopt a brand already in use by another business. Learning what, or who, is in a name is a step in the start up process that most cannot afford to skip.