Logo issues

[IRISH4lf]

What is the name of your state (only U.S. law)?
OHIO:

Please suggest a direction-My children were (one still is) members of an athletic sports team. In 2005 I took the original logo and recreated it to update the artwork. I changed, adjusted and updated the starting from scratch but basing the new off the old logo.

NOW: I was approached by a parent and rowers in the spring who wanted a large (20x30) varsity team poster based on other team concepts in the area. I secured security clearance and wrangled the teens into one spot in front of a Air National Guard Helicopter. A photographer took the photo and gave me permission to use it in the poster. I designed the poster to reflect the teams desire. MEAN and GREEN is the title. included is the team logo which I designed, the team website address, and the team name.

I provided the art to the club board for a decision on financing for the poster in May. Options given: let each rower sell 2 to food establishments in the area for profit, I pay for production and then recoup the money in sales, or the board pays for production to recoup expenses.

The boards administration changed at the end of the spring season. So the board that originally implied permission for the poster are now no longer on the board. The current board has done nothing with the poster. In an effort to provide the rowers that posed for the photo with the completed poster we decided to send out an email with a poster flyer stating that we were going to produce the poster and all proceeds would be donated back to the club minus the production of a framed copy to the Air National Guard unit that provided the helicopter.

I sent an email to everyone on the club, parents, rowers, and the club board with the flyer. I almost immediatly received an email from the club board stating that I am not allowed to produce the poster (which they had nothing to do with), I am not allowed to use the logo (which I designed), and I am not allowed to use the club emails (which other parents and I have collected over the years). The next day I started receiving checks from parents and kids for poster orders.

What am I allowed to do?

Options-Produce the poster anyway? Produce the poster with changes ie Remove the logo, name and website and produce the poster? (will I need to remove each logo on the athletes uniforms?) Destroy the poster and send everyone their check back?

 

[divgradcurl]

Have you contacted the club board to find out what the problem is, and if you can come to some sort of agreement or resolution?

 

[IRISH4lf]

Yes, I responded back to the board that I was willing to wait for them to make some type of decision. I sent another email to the board and the coaches showing a copy of the poster and other concept ideas which my poster was based off of so they could understand why the poster was as simple and neat as it is. They then responded back that I had just thrown gas on the flames??? What that means in their eyes and why, I don't really know.

I have people on the inside that are stunned and confused by the whole thing. They have told me just to produce the poster, because the board wanted to change things (they are changing it to something they want not what the rowers want) ie, Change the military helicopter rotors to oars, put an ad for an IPOD on the poster to track if people see the poster, put a paragraph of information on there to encourage rowers to join, put art from every school that athletes are from, put a really large oar across the top of the page. etc etc. First they are not paying for the poster, second they were not interested in providing input when it was created based on what the rowers wanted, and third they are not getting the poster, I'll destroy the files before they ever get a copy.

I just need to know if they can make me take the logo off, or not allow me to print my own art, There is no official trademark listed on the government site, and the copyright should be my own for the logo since I let them use the art. ??????

Frustrated

 

[justalayman]

, and the copyright should be my own for the logo since I let them use the art. ??????

Frustrated

From your post, I presume they are now using the updated logo for all uses, yes? If so, how did they acquire the rights from you? Were you paid for your work on the logo? How did the change come about (who and what initiated the freshening)?


btw: the other guy that posted is theeee guy to listen to concerning this type of issue.

 

[IRISH4lf]

Yes, they are using the logo for almost all uses, but they have other art as well which they use from time to time. As for the update, No one asked me, I was just trying to help the club so I just looked at what they had and re-drew the art from scratch adding new, and updating, I handed a hard and digital copy to the Club President and he was exstatic and advised everyone to start using the new art for the club. I was never paid for the logo work in anyway and I never asked to be paid and still don't want to be paid. I just did it because the old art was so bad it was blurry and did not reflect well on the club.

 

[divgradcurl]

What do you want in the end? I can't really tell from your description here. What is your ideal outcome?

 

[IRISH4lf]

I guess I want to know If I have the right to use the logo that I designed and everyone has used for the last 5 years without any approvals? I want to produce the poster that the Rowers wanted with the club logo which had been approved and now the board is balking after they decided that they want to try and make money off of the poster and if they cannot then not produce it at all. Shutting out the kids that did pose for the poster.


One of their thoughts on the topic is that they are worried that they would need to produce the poster each year?? And it wouldnt be fair to produce this years of they couldnt produce a poster next year. ????

I just want to publish the poster as the kids want?

 

[divgradcurl]

I guess I want to know If I have the right to use the logo that I designed and everyone has used for the last 5 years without any approvals?

Probably not. Here's the thing -- you may have designed the updated logo, but it's more than likely they own the rights to the underlying trademark. Yeah, maybe technically you still have some rights in the logo -- but you've also let them use the logo for 5 years or more without demanding payment or anything. There is a concept in the law known as "laches" which basically means you can't sit on your rights and only enforce them when its convenient for you -- it's not fair to other people. Their argument will be --and it's a good one -- that you should have asserted your rights much earlier on instead of letting them use the logo for years.

The problem is, even if everyone (whoever that is) has been using the logo for their own purposes, from what it sounds like the logo was used to identify a particular organization (or affiliation with a particular organization) -- those are trademark rights, and they belong to the organization, even if they have allowed use of their mark by others in the past.

If you can't get written permission from them to use the logo, you risk ending up in a lawsuit. Whether or not that is a risk you are willing to take is a question only you can answer.

I want to produce the poster that the Rowers wanted with the club logo which had been approved and now the board is balking after they decided that they want to try and make money off of the poster and if they cannot then not produce it at all. Shutting out the kids that did pose for the poster.

Too late now, but you should have obtained written permission from the earlier board. Based solely on what you have written, sure, it would be the nice thing (or the "right" thing) to allow you to print the poster, but it doesn't sound like they are legally obligated to do so.

One of their thoughts on the topic is that they are worried that they would need to produce the poster each year?? And it wouldnt be fair to produce this years of they couldnt produce a poster next year. ????

I just want to publish the poster as the kids want?

It's really irrelevant (at least from a legal perspective) why they are withholding permission. It's enough that they are.

The safest route for you would be to give up on this project, let it go, and take the lesson that you need to get promises in writing. If you go ahead with this project, you risk legal action -- if you do want to go forward, you should sit down with a local attorney who can review all of the actual facts of your situation and advise you accordingly.

 

[justalayman]

divgradcurl,

a question, if I may, that the OP may still have. I know I still do.

would the OP be allowed to leave logos on uniforms if they removed all personally installed logos or mention of affiliation to the club and produce the poster without fear of a justifiable suit?

 

[divgradcurl]

divgradcurl,

a question, if I may, that the OP may still have. I know I still do.

would the OP be allowed to leave logos on uniforms if they removed all personally installed logos or mention of affiliation to the club and produce the poster without fear of a justifiable suit?

Unfortunately, this is not a question with a bright-line answer. The general rule is that reproducing an image that contains trademarks in it is not infringing, so long as the trademarks are "incidental" to the photograph. So a photo of a busy intersection could be resold, even though there would potentially be logos on cars, logos on storefronts, etc., because each of those logos is incidental. A zoomed-in photo of a single logo on a storefront, though, may be more problematic, because once the focus of the image becomes the logo itself, it becomes harder to separate the "art" from the trademark.

In this case, though, even though the logos on the uniforms themselves may be small, because the focus of the picture is really all about the team itself, it is a harder sell to say that the logos are really incidental.

If the OP wants to go forward with the poster, he would be best off seeking local counsel who can review the actual poster and advise him accordingly.

 

[justalayman]

thanks. I always appreciate your answers, even if meant I was wrong, not that that has ever happened in the past...