Non-profit volunteer gone bad

[quincy]

In other words, because the designer (and owner) of the intellectual property wants to be paid money to transfer his/her rights to another party, but that party can't afford it, it's extortion.

C'mon - we're talking legalities here...you know better.

I sometimes think she doesn't.

 

[LdiJ]

I sometimes think she doesn't.

Why not let the OP talk to the police? If the police feel that its not extortion then that ends the matter.

 

[Zigner]

LdiJ - let's examine a similar example:

Suppose Bob is a photographer. Bob has a friend who is really down on his luck. No job, no income...but his friend is getting married. Bob tells his friend that he'd be happy to be the photographer at his friend's wedding. No charge! There is no contract in place and no further discussion of money (or anything else, other than time and place.) After the wedding, Bob gives his friend a nice photo book and some 8x10 glossies of the wedding. Everyone is happy. Now, a year down the road, Bob's friend is still in dire straits, financially speaking...with a newborn child to boot. Bob and his friend have a falling out and cut ties. Bob's friend asks for his photos and Bob says "I'll give them to you, and all rights to them, if you pay me $1,000."

Does Bob have any legal right to do this? Why or why not?

 

[quincy]

Why not let the OP talk to the police? If the police feel that its not extortion then that ends the matter.

This is NOT a police matter.

Please stop guessing, LdiJ.

 

[LdiJ]

This is NOT a police matter.

Please stop guessing, LdiJ.

Lets see you are neither an attorney nor a police officer (neither am I) so what makes your opinion any better than mine in this instance? I have not guaranteed that it is a police matter either. I just am not willing to rule it out.

 

[quincy]

You are guessing at laws you know nothing about and you refuse to provide any legal support for your guesses. Others consistently prove you wrong - with laws and case law - and you continue on with your nonsense despite this.

Show with laws and case law how this is a police matter.

If you have a beef with me, take it to private message.

 

[Wedge87]

I cannot thank everyone enough for the dialogue and debate! Let me be clear - we are not attempting to bring any charges or seek legal action on the designer. That is not who we are as people or as an organization. I probably should not have used the word "extortion" as that word has meaning and we do not seek criminal prosecution. All we seek is to the right thing (for both parties) in our attempt to use the combination of team name and mountain logo design going forward. We believe we have found a "fair market value" for a simple logo design like ours. We do not mind paying that value, we just don't want to be held over the barrell for an outrageous sum. I think the best course of action here is to seek cooler heads to mediate a resolution - we pay fair market value for the logo design work in receipt for rights to it transferred to the club. If we cannot get there with that, it looks like we will need to design another logo.

I also hope this is a cautionary tale for anyone reading this to put in writing the scope of work and ownership of IP. We have learned this lesson now. Thanks again - and I would like to reserve the right to ask more questions on this thread as we progress. We have learned a lot.

 

[Zigner]

I cannot thank everyone enough for the dialogue and debate! Let me be clear - we are not attempting to bring any charges or seek legal action on the designer. That is not who we are as people or as an organization. I probably should not have used the word "extortion" as that word has meaning and we do not seek criminal prosecution. All we seek is to the right thing (for both parties) in our attempt to use the combination of team name and mountain logo design going forward. We believe we have found a "fair market value" for a simple logo design like ours. We do not mind paying that value, we just don't want to be held over the barrell for an outrageous sum. I think the best course of action here is to seek cooler heads to mediate a resolution - we pay fair market value for the logo design work in receipt for rights to it transferred to the club. If we cannot get there with that, it looks like we will need to design another logo.

I also hope this is a cautionary tale for anyone reading this to put in writing the scope of work and ownership of IP. We have learned this lesson now. Thanks again - and I would like to reserve the right to ask more questions on this thread as we progress. We have learned a lot.

What is all this talk of "fair market value"? You pay what the designer wants, or you don't get the rights. It really is that simple. Can you try to negotiate a lower amount? Sure. Just don't think that you have any leverage just because you think it's too much.

 

[Wedge87]

What is all this talk of "fair market value"? You pay what the designer wants, or you don't get the rights. It really is that simple. Can you try to negotiate a lower amount? Sure. Just don't think that you have any leverage just because you think it's too much.

You're right - it seems to be that simple and is why I said that if we can't get there with negotiating down to a reasonable value (i.e. what most everyone locally charges) we will need to design another logo.

Not that it matters, but the designer is not employed by a major design house. She is a twenty-something freelancer working out of her basement. That doesn't mean her work does not have value, it just means we will not pay the same as what would be charged by a Manhattan design firm.....and which means we will probably be designing a new logo.

Thanks again.

 

[quincy]

I cannot thank everyone enough for the dialogue and debate! Let me be clear - we are not attempting to bring any charges or seek legal action on the designer. That is not who we are as people or as an organization. I probably should not have used the word "extortion" as that word has meaning and we do not seek criminal prosecution. All we seek is to the right thing (for both parties) in our attempt to use the combination of team name and mountain logo design going forward. We believe we have found a "fair market value" for a simple logo design like ours. We do not mind paying that value, we just don't want to be held over the barrell for an outrageous sum. I think the best course of action here is to seek cooler heads to mediate a resolution - we pay fair market value for the logo design work in receipt for rights to it transferred to the club. If we cannot get there with that, it looks like we will need to design another logo.

I also hope this is a cautionary tale for anyone reading this to put in writing the scope of work and ownership of IP. We have learned this lesson now. Thanks again - and I would like to reserve the right to ask more questions on this thread as we progress. We have learned a lot.

The word "extortion," like the words blackmail and fraud, are often used casually by laypersons. And that's okay. Laypersons are not expected to know or understand legal terminology. On a legal forum, however, most of the forum members are sensitive to the legal meanings and most of the forum advisers will use the words as they are defined legally.

I think you are very smart to try to negotiate a reasonable price to pay the designer in exchange for all rights in the logo. It is unfortunate that the designer is demanding payment now because a dispute with the club has made her decide to assert IP rights, but it is what it is.

Yours is indeed a good cautionary tale. Agreements should always be in writing and dated and signed by the parties. Disputes are not uncommon. A written agreement can work to eliminate the source of many of them.

Any update you wish to provide would be welcomed. Good luck.

 

[Wedge87]

The word "extortion," like the words blackmail and fraud, are often used casually by laypersons. And that's okay. Laypersons are not expected to know or understand legal terminology. On a legal forum, however, most of the forum members are sensitive to the legal meanings and most of the forum advisers will use the words as they are defined legally.

I think you are very smart to try to negotiate a reasonable price to pay the designer in exchange for all rights in the logo. It is unfortunate that the designer is demanding payment now because a dispute with the club has made her decide to assert IP rights, but it is what it is.

Yours is indeed a good cautionary tale. Agreements should always be in writing and dated and signed by the parties. Disputes are not uncommon. A written agreement can work to eliminate the source of many of them.

Any update you wish to provide would be welcomed. Good luck.

Thank you and I will update. I would also say it is a cautionarly tale for artists as well - no contract / invoice means you have the right to the IP, but not that you will necessarily get paid should you want to be paid at a later date...

Question- we found a general intellecutal property release form used by another non-profit organization. Would something like this be sufficient going forward or does each transfer of IP require a specific transfer agreement per item produced?

 

[quincy]

Thank you and I will update. I would also say it is a cautionarly tale for artists as well - no contract / invoice means you have the right to the IP, but not that you will necessarily get paid should you want to be paid at a later date...

Question- we found a general intellecutal property release form used by another non-profit organization. Would something like this be sufficient going forward or does each transfer of IP require a specific transfer agreement per item produced?

There is no specific legal form required to transfer rights in a work. The only requirements for a transfer are that it is in writing and exclusive rights are granted and the transfer agreement is signed by the owner of the rights.

It is always advised that agreements are personally reviewed by a professional to best ensure the agreement covers all that is wanted and needed. But this is not a legal necessity.

 

[Taxing Matters]

Registration of a trademark is not a legal necessity in the US. It is the use of the mark that confers rights, with the first to use the mark as an identifier for a product or service the presumed owner of the mark. This of course is a rebuttable presumption.

Agreed. Registration though also makes it easier to assert that the mark is enforceable nationwide, which is what I was trying to get at.

There are very few uses of a logo that would be permitted. Trademark names can be far easier to use than a company's logo, but then only in a descriptive sense and for limited purposes. Although there can be (and are) similar logos, so the mountain design might be usable, if the trademark of the club is incorporated into the design, the club could challenge its use by others.

Trademark law centers on consumer confusion. Any use of another's mark that leads to or could lead to confusion in the marketplace is infringing on the first user's trademark rights. Any use of another's trademark (name, slogan, logo, colors, scents ...) that trades off the reputation of the trademark holder can violate a state's business practice laws.

I do not disagree with any of that. My sole point on this, which I think you agree with here, is that it may be possible that the copyright holder could still make use of the logo in some way that does not infringe on the trademark of the organization. Without more facts and seeing the logo it is not really possible to say for sure one way or the other.

That is not necessarily true. The club may need to "pay up" if the design has copyrighted elements. The club would not (necessarily) have to pay for the logo otherwise. The club has established trademark rights in the club's name and the logo. They can potentially assert these rights.

Right. My point was that the organization has the option of simply refusing to pay anything to the designer and, if the designer does hold the copyright in the logo, it could still go out and get a new logo. That would not be its preferred approach, but it is an option. So it is not the case that it will somehow be put to some severe economic hardship here from the demands of the designer, at least not so far as I can see.

 

[quincy]

Agreed. Registration though also makes it easier to assert that the mark is enforceable nationwide, which is what I was trying to get at.

Okay.

I do not disagree with any of that. My sole point on this, which I think you agree with here, is that it may be possible that the copyright holder could still make use of the logo in some way that does not infringe on the trademark of the organization. Without more facts and seeing the logo it is not really possible to say for sure one way or the other.

Yes. I agree that another use for the logo is possible, depending on how the logo is designed.

It can be a mistake and a professional risk for a designer to market the same or a similar logo used by one of her clients to another of her clients, however. The designer is opening up her second client to a trademark infringement claim.

Right. My point was that the organization has the option of simply refusing to pay anything to the designer and, if the designer does hold the copyright in the logo, it could still go out and get a new logo. That would not be its preferred approach, but it is an option. So it is not the case that it will somehow be put to some severe economic hardship here from the demands of the designer, at least not so far as I can see.

The hardship for the club comes from having to establish recognition in a new mark as an identifier for their club. For example, it would be difficult and costly for N!ke to replace their trademark Swoosh, not only on all products that bear the swoosh mark but also to replace it in consumers' minds, who connect the mark with the company's products. Same with the FORD blue oval and any logo that has come to represent a company product or service.

In other words, switching logos is not just a simple matter of choosing another design.

 

[Wedge87]

Okay.



Yes. I agree that another use for the logo is possible, depending on how the logo is designed.

It can be a mistake and a professional risk for a designer to market the same or a similar logo used by one of her clients to another of her clients, however. The designer is opening up her second client to a trademark infringement claim.



The hardship for the club comes from having to establish recognition in a new mark as an identifier for their club. For example, it would be difficult and costly for N!ke to replace their trademark Swoosh, not only on all products that bear the swoosh mark but also to replace it in consumers' minds, who connect the mark with the company's products. Same with the FORD blue oval and any logo that has come to represent a company product or service.

In other words, switching logos is not just a simple matter of choosing another design.

So this brings up my next question: the design of the logo is the club name with graphic mountains over the top. The name of the club is in a particular typeface and the the first two letters of the first word and the first three letters of the second word are in black. The remainder of the letters of both words are in white. Which portions of the logo constitute to what the designer could reasonably claim copyright ownership? Can she just claim the mountain graphic? Can she claim the use of different colors in the name? Can she claim the particular typeface (my understanding is that this is a "no").

Thanks!