Rights to my design?

[soundhound]

I just need some input from y'all. I have been working for a few years with a client to design their primary ID. It is an evolving design and we are still tweaking the prototype sign.

I was just informed by their facilities person that they have decided to have a competitor duplicate my design in at least 2 new facilities they are building. Their explanation is that the general contractor selected my competitor (I was not even included in the bidding)... and they expect me to send over all the documentation he needs to purchase all the components and erect my sign.

I have a number of projects going with this client, and do not want to go to war with them... just wondering if anyone has any great ideas on handling this?

 

[Locals Find!]

Charge them for you design. Its yours, someone is trying to out you of the business relationship. Your going to lose all the work anyway at this point. Get paid well for it walking away.

 

[weaselboogie]

Let them know that your design time is part of your price if price was the factor of why they went with a competitor. Also let them know that you'll need to charge them for it, but will be happy to supply the competition with a completed design once your customer pays for it. Your customer must know that this is theft and 'could' go to court if needed. The other guy is cheaper because he may not have spent as much time in development as you did. Charge accordingly!

 

[soundhound]

I billed them, and am still billing them for the design.

But as I understand it, that doesn't mean they can just have someone else produce it.

I don't want to see my design show up without my involvement, and i certainly don't want to see my design in a competitor's portfolio.

 

[Joe Diaz]

Question: have they paid for the design work and for you to release the artwork to other vendors? and did you explain to them what they were hiring you for and what they get out of the deal? (Don't assume that they know.) If the answer is no they haven't pain and yes they know what they agreed to then:

Call the boss, the main guy or gal, talk to them and no one else. Explain the situation, tell them you did the design work, and would love to do the sign work too. If price is why they are going with the other sign shop, let them know that the competitions price would most likely be higher if they had to do the design work too. Then give them the option to purchase the art files from you. If they already have then they have every right to use the other shop.

Moving forward, try to offer branding or logo design as a separate service, give them the option to buy the artwork, and make sure you get paid for that service, before moving on to other work. (it should really be done first anyway) By doing this you establish that your designs have value outside of just the sign work. They should know this anyway, but sometimes won't until you put a price tag to it.

Make sure you collect down payments before you do ANY design work, if you don't do this already. This acts as an insensitive for the client to stay with you, as they have already invested in you. Rarely will a client pay a down payment, then decide to go elsewhere, unless your service is bad.

Don't ever do the design work for free with the hopes that you would be their one and only sign/print/whatever shop? I have found that this hardly ever works. Do not give away a valuable service for free. Your client knows that the design has value, otherwise they wouldn't want to continue using it or hire you to do it in the first place.

 

[Rick]

 

[wildside]

I billed them, and am still billing them for the design.

But as I understand it, that doesn't mean they can just have someone else produce it.

I don't want to see my design show up without my involvement, and i certainly don't want to see my design in a competitor's portfolio.

if they are paying then they have ownership. they can have whoever do whatever, just because you designed it don;t mean anything since they are paying for the design time.

on a side note, why "years" working on their main id?, do it once, do it in a reasonable amount of time, and get paid......

 

[Joe Diaz]

if they are paying then they have ownership. they can have whoever do whatever, just because you designed it don;t mean anything since they are paying for the design time.

Paying for design time doesn't necessarily mean the client owns the art (at least not at every shop or design firm), Art may have more value then just the time spent on it. It really depends on how you are setup. Either way you do it, you need to discuss with your client what they are paying for.

We give them the option from the beginning and explain to them what they are getting with both options: They can decide that they want to buy the artwork: We release the art (in multiple formats) after the design has been payed for. Or don't buy the artwork: We keep the art on file, they come to us every time they need to use the art, we charge them a fee everytime they use the art. If at any time they want to purchase the art and have it converted to the multiple file formats and loaded onto a disk we will sell that to them.

If the client anticipates using the design multiple times in the future (ie logos, branding, etc) most of the time the client wants to own the art and will be willing to pay for the design in the beginning. But sometimes they don't need or want to own the art, in this case the art has less value, plus we don't need to spend time converting the design to multiple formats and burning it on a disk. So, they cost goes down.

But I can't stress this enough, in order for this to work at our shop, we have to explain to the client what they are purchasing or what they aren't purchasing before any work is done. That part is key. Since making that our policy we have been able to sell more logos then we ever have, and our clients finally understand the value of our design work.

 

[vid]

Not knowing the extent of the project(s) and your capabilities, it's difficult to fully address the predicament without speaking in generalities.

However, I used this line to sneak into one of my first sign projects as a designer:

"It's nice but, it seems like it would be better if..." and then provided points why my ideas were better.

I used that after reviewing the spec sheet and construction detail the sign company provided for approval, to insert myself into broader areas of the project. At the time, I was a just to provide t-shirts for a new business. However, doing that gave me a seat at the table as a consultant. I ended up designing the primary identity, building signs and parking lot signs as well as providing oodles of collateral material... as well as the t-shirts.

Perhaps that is something you can do to re-establish yourself as the lead on the project(s). Ask to review the specs on the other company's proposal. Then add your valuable expert opinion on:

• Material selection or alternatives - show samples.
• Sign location and effectiveness - taking into consideration the landscaping and viewing angle.
• Construction details - is it an appropriate method?
• Code requirements - does it comply with all regulations?
• Additional signage needed - Parking? Entrance? ADA? Interior? Promotional?
• as Joe said, other marketing material...etc.
• ....or, after reviewing the competitor's recreation of your art, say:
  "ooo, dude. I know we've spent sometime putting this art together and that looks off to me. I know we haven't talked about this, buuuuuuut:"
  • I could set-up the way I'd think it would look better for $$$... (sales ploy)
  • I could send the original file to the other shop with a limited use agreement for $$$... (>dialogue on copyright use)
    I gotta admit, I kinda like this one. Let the facilities manager in on the conditions and have him deliver the bad news to the general contractor or sign shop... provided, of course, there's the ability to do that.​

Prove yourself as the expert and make the customer question the ability or interest of the competitor.
​

From your competitor's perspective, I've used this line for "take-aways."

Is that something they can do?... questioning the original designer/sign shop capabilities in fabrication, scheduling, installation, licensing, insurance, etc.

In another town, a company I worked for would bang heads with a very good designer/sign shop. Like the Diaz shop, he was very shrewd about protecting his art. He included his copyright notice on everything he produced for his customers. It worked with us and we respected that. The work out of his shop wasn't always our niche.

However, there were instances where we could get the designer shop to concede art to the customer because the shop I worked at had:

• An electrical contractor's license.
• Big insurance coverage.
• In-house installation crew.
• Relationship with end-user - (event promoters requesting sponsorships of competitor's customers)

and was better at:

• Relationships with contractors - an unwritten preferred vendor. (kinda sounds like this one gotcha)
• Work history with landlords and developers - delivery on expectation.
• Work history with the city - compliance with all codes.
• Deadline scheduling.
• Fabrication.
• Easy working relationships/customer service.
• Politics at the job-site - being the sign expert.

These were fairly easy points to make and sway the projects we wanted our way. The art came gratis from the designer shop. Sometimes because he was shamed into it, and probably sometimes because he knew we didn't play in his strongest niche of profitability.
​

To that end, I'd suggest a self assessment of one's capabilities. Both in an effort to improve the capabilities and marketing approach of your shop.

• Is your shop capable of producing the work to customer expectations.
• Does your shop capable meeting all licensing, insurance, and code requirements.
• Is your shop a top of mind vendor with those who have the opportunity to refer your work - contractors, landlords, developers, or other business owners ...or even facility managers.
• Is your customer service clear and concise explaining expectations, both to the customer, and from the customer.
• ...ummmmmmm, what Joe wrote.
  
  
  
  Failing everything else, is working with the competitor and taking a broker's fee a possibility?
  

Not that either scenario applies to you, but in either case, the winning side is the one that is seen as the best expert.



Just a few random thoughts...

 

[soundhound]

great responses!

Thanks for all the interest... guess this is a "button" issue.

There are a lot of misconceptions out there about who owns what regarding design for hire, but I am not surprised to see sign folks just letting the issue go and moving on wherever possible.

My one last caveat on this whole business is about who gets to take credit for a design.

If I must turn over my fabrication materials to a competitor, is there some way I can stop him from taking credit for the sign? In this cased, the sign is being fabricated by a major manufacturer to MY detailed design specs. How can I prevent my competitor from claiming the sign for his portfolio/website etc?

 

[Techman]

As usual the legal advice mentioned may be just plain misguided.
If he is acting as en employee then his rights are non existent. If he is acting as a freelance designer then his rights most likely are intact.

A good project for members of this site would be getting a proper legal determination as to how and when copyrights are enforceable and develop a proper business plan accordingly. This very topic comes up way to often to continue as is.

I developed products that another company tried to copy. They are finding themselves paying me after all. I can assure many here that what was commonly accepted as right or wrong is actually not reality and does not fit what has been posted on the many threads.

 

[Jesse_gvi]

A good project for members of this site would be getting a proper legal determination as to how and when copyrights are enforceable and develop a proper business plan accordingly. This very topic comes up way to often to continue as is.

I found this thread after I got into a discussion with one of our salespeople regarding a less serious issue than the OP's, but similar in principle. I guess more of a "they paid for the sign design so why shouldn't they get the art on disk" kind of issue. Client's friend does business cards apparently.

Anyway, what helped me think I won the argument was that I'm currently reading http://gag.org/handbook/essential-business-practices/ -- a free download that's basically a taste of the Graphic Artists Guild's Handbook (which should arrive in my mailbox tomorrow) -- that dipped my feet into the ocean of artists' rights. There's a lot more to all this than I previously thought and I have to agree with Techman. This comes up a lot and almost every post makes me change my mind (rights to art vs keeping the peace with customers). I now have some reading to do which I hope will ground me a bit more.

 

[Mainframe]

I would explain to the customer the gap between giving up the artwork (ie an illustrator file of artwork) and giving up the shop drawings & material/build specs, tell him if someone wants to build the sign from your artwork and seeing your work from the ground that's fine, & good luck with that, but giving up the hows and whys of the construction process you have developed in house is a no go! Offer to build the sign and have them install it, The internal intellectual properties are your trade secrets you have developed and refined to produce your jobs, (this is what keeps you ahead of your competition) I am sure Wal-Mart loves selling iphones but I would bet they can't get the shop drawings from Apple too easily so they can have another vendor build them! So why should you be any different, they like the way the sign is made, Great! How many would they like to order? Tell them you can pack it up & ship it no problem.

 

[signswi]

Make them buy it from you, name the highest price you can think of. This one is pretty simple. IP rights are probably the #1 topic on these forums lately (as it should be) but this particular scenario seems straight forward. They need to pay you for it, and you should not so gently remind them that if they do not, and decide to have the competitor copy it, that your design is protected under derivative works law and they will be liable.

 

[SimonJP]

Also I always look at any objects or artwork that I may have used in the design that states I can only use it in "Finished" artwork and cannot hand it over to someone else because of licensing.

Give it to them in a flattened low resolution and explain to them that is what they own. That your work is not licensed for distribution to and by others, that if they want to hand it over to someone else they do have to pay for distribution rights... that is where you charge them.

 

[soundhound]

Difficult grey areas

The client believes that they own the rights to whatever art they paid for, but of course that is wrong. The artist owns what he has created for his lifetime... or longer... or as contracted. That's where the issue greys out... implied contracts.

The only time this ever came full-frontal for me was when I refused to deliver my art to a Federal Government office so they could have a lower bidder produce it. They had been billed for a stock art file I used in the creation, and that is exactly what i sent them, but they wanted MY worked-up design print-ready.

The Federal lawyer called and let me know that because it was a Federal Government project that I was required to hand over my design since I had received money from the Fed. I informed him that I had not been paid for my design or any time to produce it, and that they had NO rights to it .

The Fed lawyer agreed with me and I determined a selling price for the design (I think it was a few thousand) which they paid and then received the print-ready file.

The downside was that I lost the client, since they firmly believed that my speculative design belonged to them... even after being proven wrong.

I have resolved my issue on this current matter by getting all my "live" production contracts finalized, and deciding that if the client chooses to use some other company to produce my work for any other projects that I will not object. Keeping the design client is the prize.