Your own portfolio is your best tool for persuading new clients to hire you. You’d think there’d be no problem showing your body of work to a prospect. Think again.
Recently, a small design agency requested my firm’s legal guidance in drafting template agreements to use with freelancers and clients. In order to stay small and still compete for larger projects, the firm hired a lot of independent contractors, depending on the job. The firm had encountered several issues in working with various freelance employees, and the principal wanted his contract to cover those issues. One of the more unusual requests was that the contract contain a provision that none of the work that a freelancer did for this firm could ever be used in the freelancer’s portfolio or for promotional purposes. The principal didn’t want the work to be associated with anyone but his design firm.
Promotion is a fact of life for design firms. It’s axiomatic that you must show samples of your work to get work. And why not? It’s your work. It’s good. You’re proud of it, and you want to demonstrate that to potential clients. But what are the legal issues that arise when you create marketing materials and assemble your portfolio? The restriction in the contract described above is just one of those issues. Contracts, copyrights, trademarks and, of course, business judgment all come into play when developing a firm’s promotional pieces. We’ll consider all of them.
When evaluating work to be included in a promotional piece or portfolio, check all the contracts you’ve signed with clients—both your documents and theirs—to make sure there are no restrictions on your use of the work. This rule applies whether you’re a freelancer who works with design firms or a design firm that works with clients.
Employment or project contracts may contain provisions that dictate what work you can and can’t use in your own promo efforts. For example, if you signed a work-for-hire contract with an agency and didn’t reserve the right to include the work in your portfolio, you won’t be able to use it without the agency’s permission. While most clients don’t have a problem with portfolio use, some do. Other clients might not object to portfolio use, but may have a problem with use in widely distributed marketing pieces. If you have a contract with clients that grants you the right to use the work you do for them in a portfolio and for promotional purposes, there’s no problem.
Some contracts require that you notify the client or request permission to use the work in any way. If that’s the case, do it. You’ll probably gain the client’s permission. But if you don’t, it’s better to know before you’ve spent any money on your promo materials. Don’t automatically assume that because you created the work, you can use it for self-promotion.
In the beginning, as the creator of a design work, you, the designer, own the copyright rights in the work, including the right to display it. That includes promotional purposes. But just because you’re the work’s creator and original copyright owner doesn’t mean you end up as the copyright owner.
There are two common situations under which you won’t ultimately own the copyright in your own design:
1) If you were a full-time employee of a company when you created the project and your job description included design work, your employer or former employer owns the copyright in the project; and
2) If you transferred your rights or signed a work-for-hire agreement, you do not retain the copyright.
But if there’s no agreement in writing, under copyright law, any work you create can be used for any purpose except the one you granted your client. (In other words, you can’t reuse a restaurant logo that you designed for another restaurant.)
Even if you don’t have to notify your client of your intention to show the project in your marketing materials, it’s a good idea to make sure your client doesn’t have a problem with it. (It’s also an opportunity to contact a former and presumably happy client.) And if you’re concerned, even for a moment, that your request might cause conflict, don’t even consider showing the project in your book.
The consequences of using any project, even your own, in an unauthorized way can be significant: One legal case involving portfolio use found that the artist who created the work didn’t have the right to use it, and it cost her $150,000 after the fact to put it in her portfolio. So it’s wise to clarify all opyright-ownership issues before you spend money on your marketing materials.
Suppose you’ve done some great work for companies that have well-known logos or trademarks. Can you use their trademarks in your promotional piece to identify them as clients?
The short answer is yes. You can always use someone else’s trademark to accurately inform the public of the goods and services it actually stands for. You can use an Apple logo to represent Apple computers. But there’s one caveat: Your use of the trademark must be informational and collateral and must not identify you as the source of goods. If you go too far by implying with the use of a mark that you’re an authorized dealer, for example, you’ve crossed the line into infringement. As another example, if you own a garage and service cars, you can use the trademark of GM and Ford to identify the fact that you work on those cars. But you can’t use those trademarks to promote your own services or to make people think you’re connected to GM or Ford. Even if you’ve done work for McDonald’s, the cover of your marketing brochure cannot include the golden arches with the headline “McDonald’s Designers.”
What about a logo design or corporate identity that you created for a client? Most companies are happy to have their logo and corporate I.D. displayed as much as possible, especially as an example of good design. However, because most identity work is done as work for hire, you may not have the right to use it without permission. Check first.
Issues with Other People’s Work
The brochure you want to include in your portfolio includes images from a photographer you commissioned. What’s your obligation to that photographer? Remember that freelancers you hire for a project retain rights in their work unless they signed a work-for-hire agreement with you. If you don’t have such agreements, be sure to get permission before you use work they contributed to as a sample of your own.
The right to use your work in promotion and portfolios should be a standard provision in any contract you sign with a client. That way, you can consider your entire body of work when you’re choosing the best examples to promote your business. Your choices—and your ability to drum up new business—may be strictly limited if you don’t have permission to showcase your own designs.