Client gets a business card design 3 months back- today I find out today that client is using the card design for a logo even though the contract states there is no release for using the design outside of the card. I offered a logo release at the time of the card design, he refused
After much debate, Client thinks he owns the rights to my work because he paid for the just the card design - The contract in question was with the rest of the conversation on FB and once I notified the client that he was in breach of my copyright the Client responds with "I never signed the contract." There is proof of an agreement in our FB conversation.
Do i have a case, what are the kinds of damages I can sue for and how would I go about doing it?
Ira W DavidIntellectual Property Law AttorneyLas Vegas, NV ·
You may have a case for copyright infringement as you would continue to own the copyright in the card design unless Client has in writing that you transferred that right to him. However, since there is a dialog on FB, you really need to get a copyright litigator involved. The downside is that your damages would be limited as you never registered your copyright (I presume). However, you can file the copyright registration today and your damages, both direct and statutory could be computed from the date of filing. Discuss this with your IP attorney.
Andra Marie VaccaroIntellectual Property Law AttorneyLos Angeles, CA ·
There are several issues that need to be addressed before you file suit -- for example does the logo have enough creativity to be filed as a copyright. Logos, like any other artwork must possess sufficient creativity to be registered with the US Copyright office. Even then, it may not be upheld in a Court of law. You need to see an IP attorney to determine if it is copyrightable. If not, and the client is using it as a trademark, you may be out of luck as trademark rights arise when the logo is used in commerce. Thus, please seek CA IP counsel to determine what, if anything, you can do. Good luck! Many of us offer a free consultation.
Assuming you can prove a contract was formed and that one its terms was a license to use the logo only on business cards -- and the other party is a California resident -- then your best way forward may be a small claims action in a state superior court for breach of contract. The amount you could recover is capped at $10,000 but that is likely far more than any actual damages you could prove in a copyright infringement lawsuit in federal court -- which, not unimportantly, would be very expensive to litigate. In short, you should discuss with your own California-licensed intellectual property attorney the potential to frame this dispute as a contract law matter -- not a copyright law matter. Good luck.
It appears that you may have an enforceable copyright claim, subject to review of the FB correspondence and contract. Presumably you filed for copyright registration of the logo, as damages only start from the date of registration. If you file for registration you can ask for what has been your lost profits or you can ask for statutory damages. You should retain an experienced copyright attorney and only pursue the claim with the aid of counsel. I disagree with my colleagues suggestion about small claims court, since only the US Federal Courts have jurisdiction to adjudicate copyright infringement claims.
