Can I display work created at my last employer in the portfolio section of my website if I remove their logo, name, contact info

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I recently left my employer of 12 years to start my own business. On my new company website, I'd like to show some marketing collateral I created as proof of my skills. When I published them on my website, I got a call asking to take the pieces down, even though the pieces are not confidential, are currently available for viewing on my past employers website and I never say the company is a current client of mine. Of course I immediately obliged and removed them. Since almost my entire career was at the company, however, I don't have much else to show. Can I recreate each piece with similar structure/layout/theme, but rewrite the content, take off the logo and remove any identifying info tracking that piece back to that company & not break any laws? If not, do I have any other options?

Attorney Answers

3
Maurice Ross ·
The pieces that you created while employed belong to your employer as works for hire---which means that only your employer has the right to copy, display, distribute or otherwise use them. Thus, your former employer has the right to demand that you stop using these pieces on your web-site, with one big exception. If your use of these materials qualifies as fair use under copyright law (a doctrine informed by the First Amendment), you are permitted to use them notwithstanding your former employer's demands. Courts have been divided over the years as to whether the doctrine of fair use allows a former employee to use work that he created as part of his personal portfolio. Many courts have been reluctant to allow an employer to use copyright law in a manner that prevents a former employee from earning a living. However, the outcome a judicial battle over the fair use doctrine may depend upon many specific facts and circumstances, such as the nature of the works that you created, the extent to which they became closely associated with your employer's business in the minds of consumers and the public, the extent to which your use of the works that you created in your portfolio might impair their market value, and whether or not you are using them for purposes of competing with your former employer for its customers and clients. If you are setting up a business that directly competes with your former employer, it would be unlikely that a court would allow you to successfully assert a fair use defense. But if are not competing with the company for customers or clients, and if your use for purposes of your portfolio would not significantly impair the value of the pieces you created for your former employer, it is reasonably likely that you could successfully assert a fair use defense to a claim of copyright infringement. I must take issue with my esteemed colleague when he suggests that one solution would be to provide links to your work on your former employer's web-site rather than placing copies of your work on your web-site or in your port-folio. I believe this is an example of a situation in which hyperlinking does not necessarily avoid copyright infringement. The assumption that hyperlinking is always appropriate is, I believe, incorrect, as is evident from recent case law involving news aggregation web-sites. While you could reasonably rely on the fair use defense, this would not prevent your former employer from suing for copyright infringement. And if you are sued, the costs of defending the suit could be substantial (tens of thousands of dollars). Even if you win, the costs could be financially disastrous. Thus, a better solution would be to retain experienced intellectual property counsel to negotiate a settlement with your former employer. You are not without leverage here. Your counsel could threaten to ask a court to rule on whether you are entitled to a fair use defense, which would cause your former employer to expend money on attorneys fees. Further, your former employer may not want to have its reputation tarnished by the allegation in a public forum that it refused to allow you to display work that you made during a twelve year career in an effort to stop you from pursuing your career objectives. You should retain legal counsel, and chances are that your counsel will be able to negotiate a fair and equitable solution.
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Bruce Burdick ·
This may seem counterintuitive to you, buy you are not the author of the material.since you were an employer the material is a work for hire under 17 USC 101 and the company, not you, I'd the author and the owner of the copyright. When you publish the material on your website you violate the exclusive rights of the company under 17 USC 106 to reproduce, to distribute, and to publicly display. This is NOT fair use by you since you admit you do it for commercial purposes. Indeed, you probably at trying to divert business from the company to you. If you are not working closely with IP counsel, you should be so you don't make this sort of mistake. Now, you ask if there are other options. One that comes to mind is to link to the other company's site and be accurate in how you do it and what you say. Work closely with an IP attorney in doing this and use that attorney to respond to the company. Don't try to respond on your own a it sounds like their is some conflict and perhaps hostility on both sides. A lawyer can help defuse that and keep you out of the direct fire and say things that legally help you, not hurt you a you would be prone to do on your own. You were wise enough to know you need a lawyer's help, so be wise and hire one.
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Daniel Ballard ·
I agree more with Attorney Burdick than Attorney Ross. Both conclude, I think rightly, that publishing the "marketing collateral" [what on earth is that?] that you created while employed is unlawful because the copyright in those works of authorship is owned by your employer, not you. But I think it is lawful for you to publish hypertext links on your website that instruct your visitor's browsers to call up other websites where those works lawfully reside. No copyright "fair use" analysis is required, to my mind, because publishing a link to a work does not violate any of the rights conferred by a copyright. You should work with your own intellectual property attorney to craft disclaimer language, however, to ensure your visitors that by publishing those links you are creating the false impression that you are somehow associated with or sponsored or endorsed by the company that publishes the linked-to website. Moreover, it may also be lawful for you to publish hotlinks on your website which pull from those other websites the images of those works such that those images appear as if they reside on your website [this has been held lawful in the Ninth Circuit under some circumstances]. You live in the Eleventh Circuit, however, and courts there have not, to my knowledge, yet passed on this question. Speak with a Georgia-licensed intellectual property attorney before you discuss this matter with your former employer. Good luck.
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