Logo being held on to as meal-ticket (All Media License)

[copyrightseeker]

Hi,

I am hoping someone on here can shine some light on this situation of mine. I commissioned a newly graduate designer to develop a logo for a new business of mine. I am not a big entrepreneur, just a recent grad with a few creative ideas cooking. Anyway, a fee was agreed upon and work began with no contract drawn. I have finally settled on a design I really like and I mention about high res vector files being presented and usage rights because I had read that it is prudent that there are no nasty surprises at the close of deal, I then get an email back stating that the designers is prepared to offer me an annual (renewable) All Media License however I would only start paying in Yr.2 as the fee for designing the logo would cover the first year. Further more, depending on how the company is doing in a year's time then the designer will consider selling me an extended license if required.The designer's stated rationale is that there are bills to be paid and that a good logo can be of huge value to my launching business.

My issues are these - though we had no contract, I just assumed that the logo being designed would belong to me. My main issue was to see the designer tweaking it to produce something not dissimilar for future clients. I was not expect this licensing line. Also, how am I meant to assert any copyright or issue a trademark application on something I am leasing?

I have read a thread on here that leads me to believe that I really should not have to contend with this...I do not want to lease a logo that was developed for me. It is also a very personal logo in that the imagery represented are what I went into the consultation stating I want featured. This presents a unique problem in that should there be a breakdown and I am forced to seek the service of another designer, the finishes product will have 2 elements that this current logo has. What if the designer tries to take up issue with this? He is not only the logo he has designed to ransom but my creative (and emotionally invested) idea. I have email documentation that proves that these featured elements were brought to the design table by me and that I asked for them to be the gem that the logo was developed around.

In fact, this was the reason I wanted assurance that he would not be creating something of the like for any future clients...I was not expecting the licensing bombshell.

Where do I stand on this? Regarding asserting full rights over the logo developed especially in terms of trademark and also, should we be unable to agree on a way forward, about having someone else produce a logo for me that will inevitably feature the 2 key elements to be found on the currentt logo that has been designed.

I thank you all in advance for your thoughts on this matter.

[PrintDriver]

You both have no contract.
All I can suggest is contact a lawyer. No one here can offer you legal advise.
While it is the usual for a logo to be turned over, it is also usual for a contract to be drawn up. As the owner of a company you need to be able to apply for a trademark on your logo. You can't do that if it is leased.

A nice lawyer letter to your designer should sort things for you. If you don't have the cash, see if you can find an Artslaw lawyer. Usually they work for the artist, but where artwork is involved, maybe they help you.

[Cosmo]

First of all, never, ever, ever work without a contract. Reasons just like this are why.

Second, it's pretty much unheard of for a logo to still be owned by the designer. I've never heard of that in my 24 years in the business. If you pay for the logo, it's yours to do with as you please.

This is also why newly graduated designers shouldn't freelance. Chances are he may not know that he's in the wrong. But, he has no real world experience to draw from. Or he may know he's wrong and hope that you will take the bait anyways.

I would have a conversation with the designer first. An actual, face-to-face or phone conversation, not email. Explain to him that you expect to receive full rights to the logo. At that point both the designer and you should sign a contract clearly stating the terms. If he doesn't agree, walk away.

**I'm not a lawyer, so this next part is my opinion - take it for what it's worth**

Because no contract was signed and no money exchanged, he has no rights to you or your business. You are free to get the logo designed by someone else using whatever elements you want in it. I would not send the new designer any sketches, proofs, files, or whatever that the previous designer sent just in case.

[copyrightseeker]

Thank you for the quick responses. I am really hoping we can sort this out mutually, and yes, lesson learnt to never venture into these things without a contract. I would rather just walk away than have to get a lawyer involved as it would make no financial sense in relation to what the expected design fee is to be. I am based in the UK which I maybe should mention in case it changes anything in terms of IP laws.

I realise that should we be able to move forward a contract will now need to be issued. I feel quite uncomfortable about the whole situation because I am simply trying to protect the image developed. I am pleased to hear, even if it is just an opinion, that there ought to be no problem getting another logo designed featuring the key elements of importantce.

Also, that leads me to ask in terms of intellectual property because I was so explicit in stating what I wanted from the initial conversation and did not veer from this, does ownership of the idea/concept not sit with me or is IP merely concerned about the realised product?

[Lith]

Huh. Reminds me of the wine label designer wanting a royalty per bottle. I've never heard of either. If you get it sorted, please swing in and let us know how it worked out

[copyrightseeker]

Lith, thanks for raising a smile when I am feeling most decidedly tense! It is I guess exactly like the wine label designer...Will most definitely update this thread upon reaching a resolution with the desiner.

If I may throw in a couple of questions - does anyone think it might be worth asking the designer if he has a 'buy-out' figure in mind when I next speak with him and also is it common for designers to have a manager??

[Buda]

If a fee was agreed upon and work started, it seems very cheeky for them to turnaround and try and lease it to you. I've never heard of any client agreeing to lease their own logo and even less likely after a price has been agreed upon.

Sounds like this new grad doesn't know what they are doing. Maybe someone poorly advised them that logos were subject to lease?

If you went to this designer with a clearly realised concept, you still own the concept. If you decide to wash your hands of this designer because of their business practices, you can take your original brief and concept elsewhere, just not the work that this designer has put in.

[KitchWitch]

What a sucky situation. I hope you don't think your designer is representative of all of us. As others have mentioned, a lawyer would be your best bet, in my opinion. Your designer sounds like he knows exactly what he's doing, as you said, using the logo as an ongoing source of income. Personally, I would assume that if you have another person design the same logo, the first designer will come after you for it, claiming he owns the rights to the creation of the design.

Sorry you have to go through this.

[<b>]

Originally Posted by Cosmo

I would have a conversation with the designer first. An actual, face-to-face or phone conversation, not email. Explain to him that you expect to receive full rights to the logo. At that point both the designer and you should sign a contract clearly stating the terms. If he doesn't agree, walk away.

I completely agree.

Over 30 years, I've designed hundred of logos, and each of of them belongs completely to the organization that purchased it, and those organizations are completely free to do whatever they want with their logos with no further obligation to me. I state in the contract that any copyright and all rights to the logo are transferred to the client upon payment in full. I do, however, add a sentence to the contract that gives me the right to reproduce their logo an example of my work for my promotional purposes. I've never had anyone object to that, but if they did, I'd take it out.

It would be foolish for any business owner to allow someone else to maintain legal rights to something as critical to the business as its logo.

As Cosmo mentioned, just have a polite talk with the designer. Politely mention that you need to flat-out own the logo and that you need a contract that, among other things, states the terms of your working relationship, the final product, the terms of payment and that the designer will transfer all rights to to the logo as soon as payment is received. The contract doesn't need to be full of legalese and can be quite simple — just get it agreed to and signed.

From what you wrote, you can likely walk away from this seemingly naive designer at any time (I'm no attorney and I don't know the designer's side of the story), so if the two of you can't come to a mutually acceptable agreement, say "sorry" and "goodbye."

[Buda]

Originally Posted by <b>

I state in the contract that any copyright and all rights to the logo are transferred to the client upon payment in full. I do, however, add a sentence to the contract that gives me the right to reproduce their logo an example of my work for my promotional purposes.

Yep, I have this in my Terms and Conditions which is on every invoice, quote and contract.