Dealing with an Intellectual Property Issue

[Ultima Designs]

Unfortunately I haven't been around FK a lot recently...I have been overwhelmingly busy with work and life in general. However, you guys are always quite helpful, and I'm dealing with a sort-of personal, sort-of business issue right now, and I was hoping some of you guys might have some advice as to how to handle it. As a preface, the situation I'm describing to you was clearly a poor business decision, and I know this -- I've learned my lesson and it won't happen again.

Anyway, a while ago now, we developed a website for a local hospice. At the time, they were fairly small and undeveloped; they had maybe 5 employees and all of their work was local. During this same time, I was in a pretty serious relationship with a great gal who aspired to be a graphics designer. Being the nice boyfriend that I was, I offered to let her design one of the sample logos that we submitted to our client for review. Well lo and behold, the client chose the logo that she designed.

Ultimately, the client stuck with the logo that she designed. Because she was my girlfriend, I didn't think anything of it, nor did I pay her anything for it or write up any sort of agreement for it -- she was just excited that they had been so impressed with her work. Over time it fell to the back of my mind, as we stopped working with the client for a pretty decent period of time. During that same time, I broke up with the girlfriend (and I think it's safe to say it was a "bad" breakup).

Well about a week ago, I got a call from the client. They wanted to meet with us to discuss some new work that they've been planning. After meeting with them, I found out that they have grown significantly, now have over 50 employees, and are beginning to expand nationally. They want a new website and a number of modifications, but one thing that they don't seem inclined to change is the logo.

My concern is that our client is using a logo that is someone else's intellectual property. If they keep growing and the logo becomes used more and more frequently, I'm concerned about the liability for both my company as well as our client.

I've thought it and it seems like I only really have two options: either a) telling the client about the situation and trying to convince them to allow us to design them a new logo or b) contacting the ex and trying to get her to transfer her rights to the logo for a percentage of the income from the project.

The struggle for me is which decision is better. Dealing with the client means that I have to explain the poor business decision I made, and beyond this it seems like they have been using the logo on letterheads, envelopes and the like, so persuading them to accept a new logo could be incredibly difficult. Dealing with the ex means calling someone who I haven't even talked to for over a year, trying to actually talk to her and then trying to settle for an appropriate amount of money, and potentially opening up a whole new can of worms with old feelings and emotions.

I've learned my lesson...business and personal lives need to be kept separate. In the future, if something similar ever happens again I'll have the girlfriend/friend/whatever sign an IP assignment agreement for the work. However, in my eyes, I need to deal with situation before it becomes more of a potential problem.

Any advice/suggestions/alternative proposals for handling it?

[alty29]

uhm......yes?

[j_hunter182]

I don't see how this would cause a problem. Does she have copyright ownership of the logo? No? Then I don't see any problem in you continuing with the proposed work and using the old logo.

(I'm no expert, so I may be wrong)

If the logo was shown to client as work produced YOUR company and not the individual then is it not property of your company and not the designer? Is it not just a graphic that nobodies has rights over?

[Ultima Designs]

Since she designed the logo, she holds copyright ownership of it. She never assigned her rights for the logo to our company or the client; because of the casual nature of the situation at the time, that sort of thing wasn't even discussed.

[argonauta]

Contact her, telling her the client needs some graphic design work. Make her do anything and pay her a bit. But before that, make her sign a contract stating that all of her work done for company x, past and present, can be used in any type for, blah blah and the client would retain copyright of it and all that.

The key would be how to include the 'past' works, without she noticing. If she doesn't have much experience yet, she would just sign the contract, and with that, you're on the right track again.

[Ultima Designs]

I like your thinking argo, and I think that that would be an excellent way to handle it. The only problem is...I don't know if she whether she will have any inclination to help out or not. I wouldn't exactly know how to answer her if she asks, "So why the hell are you picking me to do this after not talking for so long?"

[Natsia]

Why? Bah! So easily bs'ed!
"To maintain the integrity of the design" You need her to ensure that the new project will remain true to the existing look and feel of their previous design work.

*hit over the head for being a baka*
Baka.

Edit: Its really horrible to admit to but, you are going to have to be a master of diplomacy until she signs said contracts. That means manipulation to a sickening degree.
Whatever happens, whatever she throws in your face: She is right. You are a poor example of human and should die one thousand deaths.
Pander her ego. She is the only one who can bring the same energy to the project, she is a design god.
Basically... Treat her like a gifted employee.
She's gifted, but youre the boss so you can shnaie her later.

[Ultima Designs]

You guys are great. Couldn't have come up with a better plan myself. That seems like exactly how I'm going to handle it. Thanks a million.