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Ed. note: On Friday, August 19, AIGA issued an Action Alert to members after discovering that a number of logo designs being sold on the website LogoGarden.com were not original and had been appropriated illegally, without permission from their copyright owners. Attorney Linda Joy Kattwinkel, who writes the “Legalities” column for AIGA San Francisco, provides guidance on what to do if you believe that your, or your client’s, property rights have been violated. This article originally appeared on AIGASF.org and has been modified for this forum.
Recently, the design
community was shocked to discover that thousands of its logos had been copied
(often with minor modifications) and offered for sale on a website called
LogoGarden.com. (For background, see Ric Grefé’s post on this topic; the Action Alert to members; and more online discussions here, here, here and here.)
When you discover your work has
been copied online, what should you do? I discussed this issue generally
several years ago in “Legalities 9: Online Works: Registration and Copying”—read this if you encounter a copy that is not a clear
plagiarist attempt to resell your work. That article also describes how to
determine whether an online use might be fair use.
For this article, though, we
are concerned with blatant plagiarism.
When that happens, here’s what to do:
When you create a design for a
client, either you or your client may own the copyright. Generally, the person
who creates a design is considered its “author” and automatically owns
copyright in that design under copyright law. However, there is a limited
exception under the “work made for hire” doctrine: if you are an employee, your
employer is considered the author and automatic copyright owner of any work you
create within the scope of your employment.
If you did the work as a
freelancer or independent contractor, you may have given your copyright to your
client in an explicit “work made for hire” contract, or by a written copyright
assignment in your contract with your client. In either case, the copyright
transfer is not valid unless you signed the contract. (For more on this subject, see “Legalities 1: What Is Copyright?”)
If you are dealing with copies
of logos, there is another wrinkle. Logos are trademarks, and the trademark
rights (which protect the goodwill and reputation of the company that uses the
logo) are owned by your client. Trademark infringement occurs when another
company uses a confusingly similar copy of the logo as a brand for their own
goods and services. So your client will have an interest in stopping online
sales of copies of its logo, especially to potential competitors.
If you determine that your
client owns copyright in your design, tell your client about the online
infringement. In most cases of blatant offers to re-sell the design, your
client will want to take action against the infringer. If not, ask your client
to give you permission to go after the infringer on the client’s behalf.
When someone posts a copy of
your design online, legally, everyone in the chain of distribution is an
infringer. So you have copyright infringement claims against at least two
infringers: the person who posted the copy of your design (usually the website
owner), and the hosting internet service provider (ISP). The person who posted
the copy is liable for willful infringement, as he/she presumably knew that he
was copying your design and posting it online. The website owner and ISP are
liable for infringement because they are enabling the infringing copy to be
Note: Copyright infringement
occurs when a “substantially similar” copy is made without permission. A copy
is “substantially similar” when people can recognize the copying. Small
changes, like those done in numerous instances by LogoGarden.com, do not avoid
In cases of blatant offers to
resell your designs, it is important to stop the infringement right away.
Instead of the two-step process described in “Legalities 9” (contact the
website owner first, and follow-up with a take-down notice under the Digital
Millennium Copyright Act, if necessary), I recommend that you send a take-down
notice to the ISP first. Follow up quickly with a cease and desist letter to
the website owner.
a DMCA take-down notice to the website host
There is a provision under a
U.S. law called the Digital Millennium Copyright Act (DMCA), which allows
copyright owners to demand that an ISP remove infringing content from a website
the ISP is hosting. The DMCA established very specific “notice and take-down”
procedures, under which an ISP can have immunity from infringement if it takes
down the infringing content when you send them notice in a particular way
(templates are provided at the end of this article). Most ISPs will honor a
take-down notice in order to avoid getting sued for infringement.
Finding out who hosts a website
may be challenging. Sometimes the site host has an icon or a link right on the
site, but often, you will have to do some digging. There are several services
online that can help, for example, IP Checking or NSLookup. My firm uses the service DomainTools. Your IT
people may also be able to help, or show you how to look up the web host
through your operating system.
Once you have the web host
information, the next step is to find out if the web host has designated an
agent or specific email and snail mail address to receive an infringement
complaint under the DMCA. Most ISPs list their agent and contact information on
their own site, sometimes with a step by step explanation of how to follow the
DMCA complaint procedure. Look for “legal” or “copyright policy” on the site.
The law requires that these agents also be registered with the Copyright
Office, but frequently the ISPs overlook this requirement. You can search for
registered agents online at the Copyright Office website (click on “Online Service Providers” under “Search Copyright Records,” then
click on “directory of agents”).
If you are not able to find a
DMCA agent, just use the general contact email and address for the web host.
Write your DMCA take-down notice using the appropriate template below
(depending on whether you or your client is the copyright owner). Send the notice
by email and by a trackable delivery service (e.g., FedEx or certified mail),
and be sure to sign both (type /s/ [your name] on the email, that works
as an electronic signature).
a cease and desist letter to the website owner
A DMCA take-down notice will
almost always be effective in getting the infringing copies removed from the
site. However, some ISPs may not comply, especially if they are located outside
the United States (where ISPs are not subject to the DMCA). Also, you should be
aware that under the DMCA, the ISP is required to notify the website owner when
it takes down an infringing design, and give the website owner a chance to file
a “counter-notice” alleging that the design was not actually infringing. Some
infringers will try a counter-notice if they think you might back down from
Whether or not the DMCA
take-down notice is effective, you should also send a cease and desist letter
directly to the website owner. You want the website owner to know that you are
serious about protecting your rights, and you want to ensure that there are no
repeat infringements. You will also want to know if any of the infringing
copies of your design were sold to a customer of the website. If so, you will
want contact information for such customers, so you can make sure they do not
use the infringing design. And you may want an accounting of the website owner’s
profits from selling your design. Under U.S. Copyright law, the copyright owner
is entitled to recover all profits from the infringement. If there is a U.S.
Copyright registration for your design, the copyright owner is also entitled to
an award of statutory damages (up to $150,000 for willful infringement) and to
recover its attorneys’ fees (see “Legalities 1”).
Cease and desist letters are
more effective if they come from a lawyer. However, you can start with a simple
letter directly from you. If your letter is ignored, you can ramp up with a
second letter from your intellectual property counsel.
If all else fails, the last
resort is to file a lawsuit. Consult with your lawyer to determine if that is a
viable option. As noted above, if you had already registered the copyright in
your design before this copying occurred, you will be entitled to recover
enhanced remedies (statutory damages of up to $150,000 for willful
infringement) and your attorneys’ fees if you win. That is often a powerful
incentive for infringers to take down the image and settle your infringement
claim out of court.
Here are two versions of a DMCA take-down notice, depending on if you are the copyright holder of your work or if your client owns the copyright. You will also find a template for a cease and desist letter.
Via email [ISP’s DMCA email]
and [FedEx or certified mail]
[give ISP’s mailing address]
Notice of Infringement: [infringer’s
This notice reports a
infringement of my intellectual property in compliance with the Digital
Millennium Copyright Act, 15 U.S.C. § 512(c).
Copyright Owner’s Name and
[your name, address,
[for each design that has
been copied online, give the title, US Copyright Regis. No., if any for your
original design, and URL where your design can be seen online, if any]
[give the URL(s) where the
copy is shown, and any additional information that will help the ISP locate the
copy, for example, the title given to the copy by the site owner]
Statement of Good Faith:
I hereby represent that I have
a good faith belief that the creation, display, promotion and distribution of
the above-referenced copies of the copyrighted work is not authorized by me, my
agents, or the law.
Demand for Removal:
I hereby demand that all
references to and depictions of the [title of your design] be
immediately removed from [URL for infringer’s website]
Your response to this notice
should be addressed to my attention at the address, phone number and/or email
set forth above.
Statement of Accuracy:
Under penalty of perjury, the
information in this notice is accurate.
This notice is submitted
without prejudice to my rights, all of which are hereby reserved. I look
forward to your prompt attention to this matter. Thank you.
This notice reports a
infringement of my client’s intellectual property in compliance with the
Digital Millennium Copyright Act, 15 U.S.C. § 512(c).
Copyright Owner Agent’s Name
and Contact Information:
[give your address, phone,
I hereby represent that [client’s
name] has a good faith belief that the creation, display, promotion and
distribution of the above-referenced copies of the copyrighted work is not
authorized by [client’s
name], its agents, or the law.
On behalf of [client’s
I hereby demand that all references to and depictions of the [title of your
design] be immediately removed from [URL for infringer’s website].
Under penalty of perjury, the
information in this notice is accurate and as agent for [client’s
I am authorized to act on behalf of [client’s
name] in this matter.
This notice is submitted
without prejudice to my client’s rights, all of which are hereby reserved. I look forward to your prompt attention
to this matter. Thank you.
Via email [website email]
and [FedEx or certified mail]
[Website owner name, if
known, or simply “Proprietor”; website name; address]
names for the copied logos] on [infringer’s website]
Dear Sir or Madam:
I am a
professional graphic designer. My work is shown online at [list URLs for
your online portfolios]. I created the following logos: [list your logos
by their name or client name, and URLs where they can be seen online]
(hereinafter, “My Designs”). Images of My Designs are attached hereto (by
Mail). [Include if applicable: My Designs are protected by U.S. Copyright
Registration Nos. ____________ and U.S. Trademark Registration Nos.
______________.] Under U.S. and international laws of copyright, trademark and
unfair competition, myself and/or my clients own the exclusive rights to
reproduce and My Designs in commerce.
have just learned that on [website URL] your are claiming to have
created and are offering for sale logo designs called [list infringer’s
names for the copied logos]. These logos constitute substantially and confusingly
similar copies of My Designs referenced above. You did not seek permission from
myself or my clients to reproduce and post these logos for sale. Moreover, your
site falsely claims that you created these logos as your own original designs.
letter puts you, [website name], and any other related entities,
corporate officers and employees thereof (collectively, “you”) on notice that
the creation, display and offering to sell these logos constitutes copyright
and trademark infringement, and violates other state and federal laws. These
laws provide substantial penalties for the unauthorized reproduction and
commercial use of My Designs. Remedies include disgorgement of your profits,
recovery of monetary damages, statutory damages, and attorneys’ fees. Where the
infringement is willful, treble damages [If applicable because there are
copyright registrations for your logos: and statutory damages up to
$150,000 or more] may be awarded. Along with business entities, individuals
involved in the infringing activities may be individually liable under these
laws. The minor changes you made to My Designs will not shield you from
liability. Moreover, you have exposed your customers to infringement liability,
and you are subject to contributory and inducement liability for encouraging
your customers to use the infringing logos.
behalf of myself and my clients, I hereby demand that you immediately remove
the infringing logos from your site, your advertisements, and anywhere else
they have been displayed, and destroy all copies of them, including digital
copies, in your possession.
addition, you must provide me with complete information regarding any person or
entity to whom you have distributed or sold the infringing logos, including the
name, address, phone, and email address, as well as the date each such
transaction took place, and the amount paid to you for delivery and/or use of
the infringing logo. Finally, provide your records of the purchase orders for
I receive your signed written statement and supporting documents in full
compliance with the above, and your assurance that you will not copy any of my
work in the future, I expect we can resolve this matter amicably. I need to
hear from you no later than [insert one-week deadline].
letter is written without prejudice to any of my or my clients’ rights, all of
which are expressly reserved.
[your name and signature]
Legalities is a
service mark of Linda Joy Kattwinkel. © 2011 Linda Joy Kattwinkel. All Rights Reserved. The information in this article is
provided to help you become familiar with legal issues that may affect designers. 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. You are invited to submit
questions for upcoming Legalities columns. Please send your questions to
Copyright is the exclusive right to control reproduction and commercial exploitation of any of your creative work. Intellectual property attorney Linda Joy Kattwinkel covers the must-know basics of copyright law.
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