7

I am a member of a non-profit organization that has used a logo that was designed pro bono by one of our members for several years. Very recently, this designer has had a falling out with some of the organization's members that was purely personal and had nothing to do with the work. He is now asking us to remove his logo from all of our materials and not to use it in the future.

Are we obliged to follow his request? It seems to me that he donated his time and expertise (for which we're very grateful) at a time when he had no expectation of eventually wanting us to stop using it. He still uses the logo and designs on his personal portfolio site, including a picture of an active member wearing a shirt with the logo on it. I think of this as a parallel: If I make a cash donation to an organization, I can't later ask for a refund, nor can I expect both a refund and a tax deduction.

  • 3
    His request is out of line. If he pushes, contact a lawyer. It's undoubted that you can show direct business harm if his request was honored. Temper tantrums are not cause for damaging your business (non-profit or otherwise). Ultimately I'm voting to close because this is a legal question, not a design question. – Scott Jan 23 '15 at 18:14
  • 2
    Unless the contract states that they have the right to do this, then no, they don't have the right to do this. That they use this in the portfolio is of no relevance. – DA01 Jan 23 '15 at 18:51
  • There was no contract, and no one asked him to do it. He just did it one day and said something like "Hey I made this, can we use it?" – Wes Jan 23 '15 at 18:53
  • 2
    Sans a contract, you're down to you said/he said. At this point, if you really like the logo, consider purchasing it with a contract from the designer. – DA01 Jan 23 '15 at 20:18
2

I Am Not A Lawyer, but:

He donated intellectual property. He allowed the company to use a design, and did not ask for compensation. While he may not have given the copyright to the company in writing, if the company has adopted it as their identity, and he donated the logo with the intention of allowing the company to do exactly that, I think the "common law" effect is that he turned over the copyright.

I'd ask a copyright lawyer, though. If the company had used someone else's trademark in their logo, they couldn't keep using it just because it had become associated with them.

| improve this answer | |
2

I Am Not A Lawyer, but (shameless adaptation here of another answer, in order to express a contrary view):

He allowed (licensed) you to use his intellectual property. The company did not give any consideration for the property, so there was no contract, and not necessarily any change of ownership.

In the UK and other Berne Convention countries, copyright is an inalienable right, and it is possible to enforce copyright even if there has been some laxity in the past. UK CDPA §87 Note that if a waiver has not been made in writing, there is no waiver and technically any copying is an infringing act. The designer is now enforcing his rights.

You should consult a copyright/trademark lawyer. The organisation has ended up using someone else's trademark in their logo, and they almost certainly can't keep using it just because it has become associated with them. However, because it has become associated with them, they may be able to stop it being used by anyone else. You should consult a copyright/trademark lawyer.

| improve this answer | |
  • +1 because I think it should be on par with Lauren Ipsum's answer. Not because I necessarily think this is correct. – PieBie Oct 12 '15 at 14:07

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.