Licencing Graphics that are not his?

[datasafe]

Hi guys

Some years ago my partner & I started a small business from our home producing embroidered clothing, CAD-CUT vinyl etc etc. We then purchased a textile printer that allows us to print directly to any colour fabric - we mainly print to t-shirts.

I participate in several related forums and it was from one of these forums that I received a request to produce printed t-shirts for a website owner and despatch them direct to the client. The artwork was supplied to me by the website owner and we've been printing for a couple of years since - not in large quantities, maybe 6 a week. All the artwork is music inspired.

As we didn't have our own website I struck a deal with the website owner that if he designed a website for us with the same look as his, we'd print his shirts for free. He designed our website but of course we had very little to put on it so, he suggested he populate our website with his artwork which he would licence to us.

When a sale was made through our website, we'd pay the designer 40% of the net purchase value for the use of his artwork.

From the very beginning I made it absolutely clear that I didn't want any copyright issues and the artwork had to be his designs.

So you've probably already guessed what's coming next! Last month we received a FEDEX Expedited letter from an attorney in Miami. In short, it's what's commonly known as a 'cease & desist' and of course we immediately complied. In addition we refunded payments to customers who'd purchased specific artwork. Without hesitation I also removed every piece of the website designer's artwork from our website.

As a result, I started researching some of the artwork designs that I understood were of his own making and discovered that most appeared in the 1st or 2nd page of a Google search. When I confronted him with this information he stated that he'd spent some time modifying the artwork and therefore it was his!

Here's an example of a shirt we printed with HIS artwork:


And here is an image I found on the first page of Google:


Yes, there are differences in the artwork in that he 'distressed' it, but I think you'll agree, there's an uncanny resemblance.

I've severed links with the website/artwork designer as I found nearly all his artwork were simply copies with some adjustments for printing.

I've now received an invoice from him for £956 representing 40% of the t-shirts sold from our website. He continues to state that as he'd spent some time altering the artwork to make it suitable for printing on t-shirts, the artwork is therefore his to licence to me.

So my basic question is, is he right and should I pay his invoice? He owes us quite a bit more than £956.

Sorry this post is rather long, but I had to get the details in.

Regards

John

[righty]

Re: Licencing Graphics that are not his?

I suggest you contact the US Lasers & his argument to them …...then when cool down give them his contact details....:tinysmile_cry_t:

[righty]

Re: Licencing Graphics that are not his?

That should be lawyers doh!

[datasafe]

Re: Licencing Graphics that are not his?

Thanks for the reply.

Fortunately I took action that pacified the US Lawyer!

My concern is that he'd always led me to believe the designs were of his creation from the ground up. I can go to Google, find designs, use Photoshop filters to create the distressed look but, I'd never claim the designs were mine and I certainly wouldn't attempt to 'licence' their use to a third party!

I've challenged him several times about this and he's adamant that the artwork is his and therefore licence it to me - even though, as I've now discovered, most of it infringes copyright!

Here's another of HIS artwork we printed:


and a quick Google for Sugar Hill Records displays this image on the 1st page!


He's charging me for this as his own artwork

[MissFM]

Re: Licencing Graphics that are not his?

Hi Datasafe,

Intellectual Property Law is a minefield especially as regards graphics & 2D designs. See here:

https://www.gov.uk/design-right

https://www.gov.uk/government/organi...roperty-office

My own view FWIW is that unless your man has express permission from the originator to use the design (and pass it off as his own work!) then he has stolen it and has no right to license it for reproduction nor to receive royalties.

I would imagine that the complaint from Miami has required you to cease reproduction and to "pull" all the reproductions you have produced and that this has incurred some considerable costs.

In your shoes I would certainly not pay that invoice and would consider asking the person who (IMO fraudulently) licensed the design rights to you for reimbursement of all your costs.

If he is saying that he is charging you for his work in making the design print-ready I would very much doubt that it would be normal to receive a royalty for adapting the original design of another, especially if this contravenes the original designer's copyright.

Only the original designer holds the copyright and the right to license the design and its derivatives for reproduction of any kind.

My opinion only but HTH! xx

[Amethyst]

Re: Licencing Graphics that are not his?

Do you have a contract/agreement in writing with the''designer'' ?

I've now received an invoice from him for £956 representing 40% of the t-shirts sold from our website.

Agree with Miss FM that I wouldn't be paying him anything.

[datasafe]

Re: Licencing Graphics that are not his?

Thanks again for the replies

Yes, it did cost us some money in dealing with the Miami Lawyer David Bercuson - I looked him up on Google and he's described as:
A tenacious and successful advocate for his clients, Bercuson is also a specialist in domestic and foreign music licensing and obtaining deals for artists. In 1998, he was instrumental in bringing MIDEM, the world's most important music conference and market, to Miami for three consecutive years.

I wasn't going to argue with him and complied with all their requests. I've not heard from them for several weeks so hopefully they're happy with the outcome.

The website designer/graphic designer was immediately from our website and all permissions to put products on or anything related were revoked.

I was rather surprised when last night I received an invoice from him for the £956 licence fee/commission. Had it been for artwork he'd generated I'd have no issues paying it at all but, having discovered he took it from the internet and made some modifications for printing, I feel some what aggrieved.

I made this post to get a feel for the consensus of opinion. Personally, I think he'd have one heck of a job pursuing the matter especially as he owes me something like £1,700. It's more likely that I'll be chasing him!

I would guess his invoice covers about 9 months of sales from our website and yes, I had to refund payments for which he's charging me 40%!!

Cheers

John

[datasafe]

Re: Licencing Graphics that are not his?

Do you have a contract/agreement in writing with the''designer'' ?

Agree with Miss FM that I wouldn't be paying him anything.

Hindsight's a wonderful thing and I'm now kicking myself for not formalising things properly. Any agreements we reached were simply confirmed by email.

I've been printing his shirt designs for over two years, most sales were generated from his website while the website he designed for us took sometime to generate sales.

I know he has very little money so pursuing him in the courts would cost me a lot, especially if I had to employ an 'expert witness' in copyright law! If I won, I'd likely not see a penny.

The ball is now in my court to reply to him and generate a final invoice for shirts we've printed for his website orders and drop-shipped to his customers. I'm reluctant to reply just at the moment as I need to get my facts correct, hence this post.

Cheers

John

[MissFM]

Re: Licencing Graphics that are not his?

Thanks again for the replies

Yes, it did cost us some money in dealing with the Miami Lawyer David Bercuson - I looked him up on Google and he's described as:
A tenacious and successful advocate for his clients, Bercuson is also a specialist in domestic and foreign music licensing and obtaining deals for artists. In 1998, he was instrumental in bringing MIDEM, the world's most important music conference and market, to Miami for three consecutive years.

I wasn't going to argue with him and complied with all their requests. I've not heard from them for several weeks so hopefully they're happy with the outcome.

The website designer/graphic designer was immediately from our website and all permissions to put products on or anything related were revoked.

I was rather surprised when last night I received an invoice from him for the £956 licence fee/commission. Had it been for artwork he'd generated I'd have no issues paying it at all but, having discovered he took it from the internet and made some modifications for printing, I feel some what aggrieved.

I made this post to get a feel for the consensus of opinion. Personally, I think he'd have one heck of a job pursuing the matter especially as he owes me something like £1,700. It's more likely that I'll be chasing him!

Cheers

John

Yes, you would be crazy to get involved in transatlantic litigation - these people have bottomless pockets. Maybe your man should be reminded of the potentially ruinous position his actions have precipitated for you.

I wish you luck and would strongly urge you to keep it out of court (as said, it's a minefield).

I think these days an agreement by email would count as a contract (as would a purely verbal contract but these are difficult to prove).

x

[righty]

Re: Licencing Graphics that are not his?

Suggest that you calculate your costs caused due to his actions & submit your invoice for payment within 14 days & if he doesn't pay up you can always send him a Statutory Demand the prelude to a petition for bankruptcy....... that'll scare the hell out of him

[Kati]

Re: Licencing Graphics that are not his?

I think these days an agreement by email would count as a contract (as would a purely verbal contract but these are difficult to prove).

MissFM's right ... emails can be used as evidence in court (as can text messages). If you have agreements/assertions made by him via email they can therefore be classed as legally binding :tinysmile_twink_t2:

Kx

[datasafe]

Re: Licencing Graphics that are not his?

MissFM's right ... emails can be used as evidence in court (as can text messages). If you have agreements/assertions made by him via email they can therefore be classed as legally binding :tinysmile_twink_t2:

Kx

Well that's good news as I kept all emails discussing business matters.

I need to create a good email to reply to him now. I've requested details of each item of commission he's claiming from me, so I'll await his reply.

Thanks to everyone for taking the time - it gets rather lonely when you're up against these sort of things.

John

[MissFM]

Re: Licencing Graphics that are not his?

Well that's good news as I kept all emails discussing business matters.

I need to create a good email to reply to him now. I've requested details of each item of commission he's claiming from me, so I'll await his reply.

Thanks to everyone for taking the time - it gets rather lonely when you're up against these sort of things.

John

Don't worry, Datasafe, you're not alone now. :grouphug: You have a pack of beagles rooting for you...:beagle2222::beagle2222::beagle2222x

[righty]

Re: Licencing Graphics that are not his?

Well that's good news as I kept all emails discussing business matters.

I need to create a good email to reply to him now. I've requested details of each item of commission he's claiming from me, so I'll await his reply.

Thanks to everyone for taking the time - it gets rather lonely when you're up against these sort of things.

John

Why? its just more work for you. Better to prepare YOUR invoice and demand payment from him for your losses

[bluebottle]

Re: Licencing Graphics that are not his?

Where copyright is concerned, there are two Copyright Conventions -

Berne Copyright Convention - This applies to countries outside the USA;
Universal Copyright Convention - This applies to the USA only.

Which Convention did the U.S.-based lawyer quote in his correspondence?