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    Legalities: What Can You Do When Your Work Is Copied Online?

    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:

    1. Determine whether you or your client owns copyright in the copied work

    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.

    2. Immediately contact the website owner and the website host

    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 seen online.

    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 infringement liability.

    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. Send 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).

    B. Send 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 your claim.

    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.

    3. File a lawsuit

    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.

    Templates

    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.

    DMCA Take-Down Notice A: use this if you are reporting an infringement of your own copyright

     

    [insert date]

    Via email [ISP’s DMCA email] and [FedEx or certified mail]

    [give ISP’s mailing address]

    Notice of Infringement:  [infringer’s website]

    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 Contact Information:

    [your name, address, phone, email]

    Copyrighted Work:

    [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]

    Infringing Material:

    [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]

    Contact Information:

    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.

    [your signature]

    DMCA Take-Down Notice B: use this if the copyright is owned by your client

     

    [insert date]

    Via email [ISP’s DMCA email] and [FedEx or certified mail]

    [give ISP’s mailing address]

    Notice of Infringement:  [infringer’s website]

    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, email]

    Copyrighted Work:

    [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]

    Infringing Material:

    [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 [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. 

    Demand for Removal:

    On behalf of [client’s name], I hereby demand that all references to and depictions of the [title of your design] be immediately removed from [URL for infringer’s website].

    Contact Information:

    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 and as agent for [client’s name] 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.

    [your signature]

    Cease and Desist Letter

     

    [insert date]

    Via email [website email] and [FedEx or certified mail]

    [Website owner name, if known, or simply “Proprietor”; website name; address]

    Re: [infringer’s names for the copied logos] on [infringer’s website]

    Intellectual Property Infringement

    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.

    I 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.

    This 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.

    On 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.

    In 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 each transaction.

    If 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].

    This letter is written without prejudice to any of my or my clients’ rights, all of which are expressly reserved.        

    Sincerely,

    [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 .

    About the Author: Linda Joy Kattwinkel, Esq. has been a visual artist for over 40 years and an attorney for over 17 years. She received her BFA cum laude in Communications Arts from Virginia Commonwealth University, where she studied with Phil Meggs. She was a graphic designer and illustrator for 13 years before receiving her law degree cum laude from Hastings College of the Law in 1991. As a member of the law firm Owen, Wickersham & Erickson, Linda Joy represents clients and serves as a mediator/arbitrator in matters of intellectual property and arts law. Her particular focus is copyright, trademark and arts law on behalf of designers and visual artists. She is the author of Legalities, an online column on legal issues for designers (currently hosted by AIGA/SF, http://aigasf.org/community, and archived on her firm website www.owe.com/legalities.htm), and various published articles, e.g., for STEP magazine and AIGA. She speaks frequently to lawyers and designers on arts law, including several AIGA national conferences. Linda Joy continues to paint in plein air and at her studio in San Francisco.
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