I'm a freelance graphic designer. My client asked me to create a logo for a new business. I was given source material, which later found out was of a Disney character. Client insisted on continuing to use it as a basis for new logo. We have a contract that states that the work is owned by the client, on the basis of "work made for hire" copyright. Am I, as the designer, held liable in any copyright infringement, despite my objections?
2 Answers from Attorneys
Unfortunately, the answer is possibly yes.
In part, your liability in the matter would depend on the nature of the engagement and more importantly the contract's language. The contract would need to be reviewed. In addition, an attorney notice to your client would be beneficial in preserving your rights.
Roman R. Fichman, Esq.
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While I agree with my colleague's net conclusion, that is you can certainly be held liable, I completely disagree with his assertion that it depends on the contract language.
Disney is not a party to your contract and thus it is irrelevant to them. In such a case, you as the provider can be held liable along with your client under the theory of contributory infringement in a secondary liability action presumably for copyright and trademark infringement. There is a concept known as "innocent printer" where if say I come to you to make a logo with my designs, there is no reason to believe that I do not possess the right to use and exploit those designs. If you then provide me with the logo and later it is found that these designs where someone's IP and they came after you, you can assert the innocent printer defense and will likely not be held liable. Where famous brands are concerned however the analysis changes. A reasonable person would know that I off the street would not otherwise have the right to use and exploit Disney characters, NFL logos, etc. You would be obligated to vet that and can ask me to substantiate my rights by showing a written license agreement, etc. The rights holders can often do come after the providers in these circumstances because they are the ones making money for the service. This is not to say that you are on their radar, but it is possible.
I will say that if your written agreement does not provide for an indemnification in such cases, it certainly should this way you can at least seek recourse against the client.
You should probably talk this over with an IP lawyer in private. If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
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