copyright transfer contract.

[padders]

I have got someone who has designed a logo for me. I now need to have a form they can sign to transfer the copyright of the image over to me including any derived works i make from the image etc.

Anyone know of any good sites with template contracts like this on them, there is no way i can afford one of those laywer things

[mfarmerhi]

Hi Padders,

If I can find the time I'll see if I can't draw you up something to serve as a suggestion - but not as legal advice (the following ALSO isn't legal advice) but...

Just keep whatever you draw up simple and in plain language. State what you're giving him/her and what they're giving you. The more terms/conditions you put in the more interpretation (read that: "possibility of screwing things up") there is.

(i.e. In specific and full consideration of $100.00 Jim Bob Thortan agrees to assign all copyrights to the following logo: (description of logo) to My Name. Refer to addendum "A" for photo (attach Addendum "A" with a photo/photocopy of your logo).)

Understand there is something called a "second bite." That is after 34 years Jim Bob Thortan has a second opportunity to reassert his copyrights to the logo - ain't nothin you can do bout that. But your contract will get you the first 34 without too much problems.

BTW if this logo is going to be worth some money (think the smiley face from the '70s; "Baby On Board" signs; etc...) It IS worth getting an attorney NOW - the fee's however much will be worth it in an enforcable contract. Check with an atty. - most offer an initial consultation free of charge, and most will charge a standard, fixed fee for this type of a thing....

Do it once, do it right, never have to screw with it again...

[mfarmerhi]

Sorry, thought of another Q:

Why didn't you draw up the contract for this before he drew it? You'd have avoided the "second bite" problem with good contract drafting....

Sorry to sound like an advertisement, but just another good reason to talk w/an atty.

[padders]

because it is an informal thing, he will sign what ever i ask him to pretty much and the job has not quite been completed anyway so it is not a problem. It is just for my protection

[mfarmerhi]

Padders,

Forgive me for being blunt (sometimes I'm a little too curt), but if it is truely informal then you don't need anything for your protection. I truely don't want this answer to be sassy and hope that despite how long it is it helps the forum members understand some of the issues surrounding copyright and trademark.


But saying that it is for your protection tells me that it is not informal. (unless by informal you mean "just not thought out." By "informal" I mean "we're friends and he'd NEVER think of suing me.... EVEN if this logo was worth as much as the 70's "smiley face," or a "Baby on Board" sign)

(the following is not intended as legal advice)

If you want something just for your protection, then I'm telling you that it IS a problem that a contract was not prepared prior to him beginning work. In a well know copyright case a non-profit group approached a minor-league sculptor with an idea conceived of _soley_ by the non-profit group. In fact the non-profit group maintained serious control throughout the creation process including dictating what and how the sculpture would look like and comprise.

Nonetheless, after everything was said and done - and AFTER the scupture became very famous (read "worth something") the non-profit group decided to formalize the contract..... nope, too late - despite the idea coming from the group, despite the group maintaining control of the project the sculpture was ruled to be the property of the artist.

A contract BEFORE work has been agreed upon can assign legal "authorship" (the crux of who owns the work) to you.... after a work has begun, legal authorship of that portion of the work already finished belongs to the author (i.e. in the prior case to the artist NOT the group who told the artist EXACTLY what they wanted the sculpture to look like). Legal "authorship" cannot be assigned after a work has been begun or is completed and as you already can tell is not the same as the common notion of "authorship." Regardless of how much participation you've had in the creation of this logo (e.g. telling him EXACTLY what you want it to look like) there is a good chance this logo belongs to him.

What does this mean for you? If this is truely "informal" (my definition) you don't need to worry - in fact you don't need a contract or protection because he'd NEVER sue you EVEN if the logo became very famous and worth millions.

On the otherhand, If you... or your company... or the artist... or the logo.... were to ever become famous... or worth money... or named in another lawsuit (think auto accident, divorce, someone slips and falls on the sidewalk in front of your apartment)... or if you guys EVER got in an argument... then this all presents some problems for you.

If the artist were to decide now that he liked his design enough not to give it to you... If he decided he wanted more money.... If any of the above happened then a court is likely to rule that the logo is his.

Look, sorry for going on and on, I'm just trying to present to you why if you "want something for your protection," this is already a problem. There's a long list of issues here that is very difficult to explain in a forum (in fact this has been too long already). Sorry to sound like a broken record, but in regards to copyright and trademarks, that's why you should consider an attorney.

Last night, after shutting down my computer, I realize that whatever contract that is drawn up should also release any (claimed) trademark ownership present or future. This opens up another WHOLE host of issues that would just needlessly lengthen this response.... Anyways, Let me see if I can't pull up a contract that can serve as a suggestion for your agreement with this artist. I hope all this info IS helpful and not just more than you could care about. I know you're asking a simple question - I'm sorry, but there is just no way to give you a simple answer.

[padders]

ok the facts:

- the design is pretty much finished but not paid for. It is a small job.
- i mentioned a contract, he said fine, email it to him and he will sign it.
- i am doing this because normally they ask for a 10% on profit generated using the graphic in merchandise (t-shirts) he has completly waived this but i want a document to formalize it.

Really, it is not that difficult, he will sign what ever i ask him to i just need a draft document to send him that he can sign giving complete transfer of copyright.

If he dosen't sign the contract, fine i can just get the logo done elsewhere, as i said it is a small job i just don't want to spend money marketing on it until i know it is "mine".

Hopefully a link to something would be good, www.findlaw.com has not helped me so far.

[mfarmerhi]

This suggestion attempts to address SOME of the issues that your hypothetical presents - I have no way of knowing the full issues that your particular situation encompasses.

The suggestion is written expressly to cover your side of things - a court of law may count this against you as it appears to cover your legal concens at the expense of his, it doens't show equal bargaining power, and frankly he'd have to be a fool to sign this (so much is it in your favor). Again this presents many more problems that you have acklowledged or appear to be aware of. I'm not trying to be condecending - I'm just trying to tell you there ARE some problems here.

The following is merely a suggestion and may not be legal or legally enforceable at all, in part, or in your
jurisdiction. Further, this suggestion may not fulfill the requirements of your situation and may not be
complete for your situation. It is strongly advised that anyone considering a transaction as
complicated as a copyright or trademark transfer consult a legal professional in their jurisdiction....
blah, blah, blah....

Logo Design Contract

This contract is made and entered into as of (date) by and solely between (You) and (Artist). (You)
and (Artist) are referred to collectively as the "Parties" and individually as a "Party."

I. Background

The purpose of this Agreement is to effect a full and complete assignment of all intellectual property
rights of the logo depicted on Addendum "A" (herein referred to as the "logo"), as is legally
permissible from (Artist) to (You).

II. Agreement

Now, therefore, in consideration of the foregoing, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:

Section 1 Assignment of Intellectual Property Rights

1.1 (Artist) Assignment. (Artist) hereby assigns all intellectual property legal rights, title and interest
in the logo to (You). Such assignment includes, by way of illustration and not limitation, all
copyright, derivative, and/or trademark rights that now exist or come to exist in the future. This
includes, again by way of illustration and not of limitation all rights, license by implication, estoppel,
or otherwise in or under any trademark, copyright, or proprietary right of (Artist) or of any third
party.

1.2 Use. This agreement is with the understanding that (You) may develop, license, publish,
broadcast or otherwise display publicly the logo and any derivatives thereof. Further consideration,
beyond this Agreement is hereby, explicitly foregone. This agreement is regardless of any future
value as may accrue to the logo and is with the express understanding than any future value is due to
the sole efforts of (You). By assigning these rights here (Artist) has irrevocably foregone any further
claims of ownership to the logo, to the extent allowed by law.

Section 2 Consideration / Fees

2.1 Fee. For the above terms, (You) agree to pay (Artist) ($Amount). Both parties hereandnow
acknowledge that this is in full and complete consideration of this contract and that no further
payments or consideration is involved, offered, or expected.

Section 3 Representations.

3.1 Originality. (Artist) hereby represents that he is the sole author and artist of this logo, that this
concept is original and compromises no part, either in full or in part, of any other copyrighted,
trademarked, or proprietary logo, mark, or trade dressing. (Artist) hereby warrants that (Artist) has
performed a trademark and copyright search and hereby warrants and guarantees that this logo is an
original work of authorship.

3.2 Warranty/Guarantee. (Artist) hereby warrants and guarantees that should any future claim to
ownership, origination or authorship occur, now or in the future (Artist) will be solely responsible for
all and any legal costs incurred in defending such a suit or infringement action.

Section 4 General Section.

4.1 Limitation of Liability. IN NO EVENT SHALL (YOU) BE LIABLE TO ANY OTHER
PARTY FOR ANY SPECIAL, INDIRECT OR CONSEQUENTIAL DAMAGES, OR ANY
OTHER DAMAGES OF ANY KIND, INCLUDING BUT NOT LIMITED TO LOSS OF USE,
LOSS OF PROFITS, OR LOSS OF DATA, WHETHER IN AN ACTION IN CONTRACT,
TORY (INCLUDING BUT NOT LIMITED TO NEGLIGENCE), OR OTHERWISE, ARISING
OUT OF OR IN ANY WAY CONNECTED WITH ANY CLAIM OF AUTHORSHIP,
ORIGINATION, OR OWNERSHIP OF THIS LOGO.

4.2 Indemnification. (Artist) will defend, indemnify, and hold harmless (You) and any affiliates,
employees, directors, and representatives against any claim or action brought by a third party, to the
extent relating to the ownership, licensing, origination or authorship of this logo. (Artist) will pay any
award against (You) or my affiliates, employees, directors, or representatives and any costs and
attorneys' fees reasonably incurred by (You) resulting from any such claim or action.

4.3 Governing Law. THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED
IN ACCORDANCE WITH THE LAWS OF THE STATE OF (YOUR STATE) WITHOUT
REGARD TO ITS CONFLICT OF LAW RULES. (ARTIST) HEREBY IRREVOCABLY AND
UNCONDITIONALLY SUBMITS TO THE EXCLUSIVE JURISDICTION OF ANY STATE
OR FEDERAL COURT SITTING IN (YOUR CITY) OVER ANY SUIT, ACTION OR
PROCEEDING ARISING OUT OF OR RELATING TO THIS AGREEMENT.

IN WITNESS WHEREOF, the Parties hereto have executed this Agreement as of the date first
written above,

Both of you sign.

Attach Addendum "A" labeled so, with a copy of the logo

If this is "informal" (your def.) and really "not that difficult" then you DONT need a contract. And, if there are ever any problems then trust me you will have wished that you got an attorney. $100 spent now may prevent $100,000 (or more) spent later.

To anyone and everyone, please ask questions about the issues here! I'll do my best to explain what I know in the hopes of helping. But please, if I say "there's a problem here," TRUST ME there's a problem here.

Hope I helped padders - please let me know what happens.

[mfarmerhi]

Sorry, let me try to explain one more way:

The fact that this guy will sign any contract you put in front of him does not eliminate the problems I've indicated in my previous posts. That was why I said it would be better if this contract were signed before any work was done - there's only so much you can do to contract around problems that already exist

Does that make more sense?

Hope I'm helping-

[padders]

i realise the problem but remember also that i am just running a small community website with a couple of thousand members and is hardly likely to make much profit. It is not much of an issue really just an extra something.

The only thing i can think of is a clause about derived works so that he makes no claim to any of these ie, if i modify the logo.. how could i encorporate that?

[mfarmerhi]

The example contract above covers derivative works. Seriously, take some time. Read through it. Make sure you understand what it says and what you're trying to do with it. Ask questions. I WOULD NOT recommend just jumping in and inserting/deleting clauses. By inserting clauses you risk contradicting a prior one - then the court has to decide what THEY thought you REALLY meant. You want a contract to be clear and precise... the last thing you want is a court of law trying to decide what the makers REALLY meant way back when, when it was signed and if there was really agreement or the court shouldn't substitute their own conditions. Big trouble.

The fact that your small time worries me more - I assume that means you are doing business as a sole proprieter? If so you have unlimited liability - BECAUSE your business has so little profit, if any bozo decides to sue you it's your future paychecks, house, personal car that will be attached and garnished. For me this woulld be twice the reason to make sure I get it right the first time... we don't often get the opportunity to buy a second house after the first one gets sold to settle a lawsuit.

See, if your business were structured as a profit-less corporation or LLC it would be easier for me to say, "Aw h*ll, what's the idiot going to get if he sues you anyways." I would NEVER say that if you are solely liable in an UNLIMITED portion as you are if you are a sole proprietership.

[mfarmerhi]

Padders,

What'd you end up doing and how did it go?

[padders]

hi, sorry i didn't get back to you sooner. Yes everything went well, got the images done and very happy and also the contract signed so everything is sorted. Thanks again for your help in this.

chris