Who owns your logo?

Skateboarding is an activity, an industry, and a form of expression. Creativity is not only found in the actual riding of a seven-ply piece of wood, but in the way the products and culture of skateboarding are developed. Because skateboarding also has a business side to it, the right to control the use of one’s creative output is important. In general, the creator of a work maintains control of it under copyright law, making this an important component of the skateboarding world.

Almost everything made that is original and reflects even a minimum amount of creativity can receive copyright protection. A copyright is a property right in an original work of authorship that is fixed in any tangible medium of expression (i.e., the work has to be printed on paper, recorded on film, or manifested in some physical form¿not just an idea). Examples of copyrightable works include music, skateboard graphics, logos, ad layouts, photographs, writings, Web-page designs, and software. The owner of a copyright is given certain rights to exclude others from most uses of the work, including the right to reproduce, adapt, distribute, perform, display, or digitally transmit it. However, copyrights do not last forever. The length of a copyright depends on what form a work takes and when and under what conditions it was created.

The owner of a copyright generally is the individual(s) who created the work. However, when the author is an employee, or has been specifically contracted to produce a particular work, called a “work made for hire,” the owner is the employer or the party that contracted the author for the work. The preceding sentence seems to be straightforward enough, but a tremendous amount of confusion often arises when defining “work for hire.” Most problems result from the failure of the parties to follow certain formalities in transferring specific ownership interest in the copyright.

Problems in determining who the copyright owner is are less common when the work is created by an employee within the scope of his or her job. Problems generally arise when a work is specially ordered or commissioned from an independent artist. For the work to be considered a “work made for hire,” the work must fall within one of the following nine categories:

1. Contribution to a collective work. An example would be a magazine issue having works that are separate and independent that are made into a collective whole. This category and the supplementary works category have been interpreted broadly so that a large percentage of work done by free-lance artists fits into these categories.

2. Part of a motion picture or other audiovisual work. An example would be music created for a video.

3. Translation. An example would be an English version of a book originally written in German.

4. Supplementary work. Examples are a foreword or an editor’s note commenting on another author’s work¿something that assists in the understanding of the other work.

5. Compilation. This would be a collection of preexisting materials that are put together in a way such that the resulting work constitutes an original work.

6. Instructional text. An example would be a textbook.

7. Test. An example would be an exam.

8. Answer material for a test. An example would be explanations of exam questions.

9. Atlas. Collections of originally created maps.

The parties must also “expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” So no matter what the intentions of the parties were at the time the work was created, it is not a “work made for hire” unless there is a written agreement signed by both parties and the work falls within one of the nine categories. To make matters more complex, some courts have required the agreement to have been written before the creation of the work, while oers allow post-creation written agreements.

California has further complicated the “work made for hire” situation by defining the author of a work “made for hire” as an employee for the purposes of worker-compensation insurance.

To avoid the strict requirements of the “work made for hire” doctrine, many companies¿and especially those in California¿have the author assign them the rights to the work in a written agreement. However, companies must recognize that all assignments and licenses of a copyright, or any right under a copyright for a work that is not a “work made for hire,” are subject to termination by the author within a five-year window beginning 35 years after the date of the assignment or license. So between the thirty-fifth and fortieth year after transferring the rights to a work, the author or the family of the author can elect to cancel the transfer and reclaim ownership of the copyright. If the author does not make the election during this time period, the transfer continues to be in effect and cannot be terminated. This termination provision basically gives the author or his or her family a second chance to benefit from the author’s work.

All agreements that transfer copyright must be in writing. Transfers of copyright ownership include an assignment, mortgage, exclusive license, or any other transfer of any of the exclusive rights held by the copyright owner. Requiring a written agreement for the transfer of an interest in a copyright is to protect the author from unintentionally giving away his or her copyright. The exception to the writing requirement is a nonexclusive license. A copyright owner can give a third party, by a verbal agreement, the nonexclusive right to use their music, design, etc. for a particular purpose.

An example of how this works is illustrated as follows. A company asks an independent graphic artist to create a board graphic and pays the artist for the graphic; the company has a nonexclusive license to use the graphic on boards, and the graphic artist is the copyright owner. If the verbally granted license was only for use of the graphic on decks, then the company would have to receive permission from the artist to use the graphic in any other way¿as on T-shirts. To avoid being restricted in its use of a particular graphic or other work, a company should receive an assignment or a broad exclusive license from the artist so the company has the freedom to exclusively use the work in any way it would like.

The date that the work is “published” is important because it determines when the copyright will end. Without delving too deeply into what constitutes “publication” and what doesn’t, generally the date when a work is first offered for sale is its date of publication.

Currently there is no requirement that copyright owners give notice of their copyrights. In the U.S., there was a time when a copyright owner could lose exclusive rights over the copyright for failure to give proper notice. For works created after March 1, 1989, there is no longer any risk of losing a copyright, but any parties infringing on it must be properly notified. Otherwise they may claim that they innocently infringed on the copyright, limiting the damages that could be sought.

To give proper notice, the owner of the copyright should insert the following three elements on or beside a work:

1. The symbol “©,” or the abbreviation “Copr.,” or the word “Copyright.”

2. The name of the owner of the copyright.

3. The date of first publication.

The following is the typical form of notice: © Grant Proctor 1999. The three elements, however, do not need to appear in any particular order.

The United States allows voluntary registration of copyrights. Such registration does not create a copyright¿the creation of a work in a tangible medium does, but registration does have its benefits. Registration is mandatory if the copyright owner wants to sue someone for infringement. A certificate of registration can also be very helpful if the owner is attempting to get an injunction to stop an infringer. And if a registration certificate is dated before the copyright is infringed, the copyright owner is able to recover statutory damages, costs, and attorney’s fees.

Skateboarding is an international sport and business, and ownership of copyrights in other countries should be a concern to companies that export their products¿or plan to. While there is no worldwide copyright, there are conventions (agreements among nations) that have simplified the way owners of a copyright can receive foreign copyright protection. Most notably, the Berne Convention has established minimum rights that may be claimed in all member countries, which include all modern industrialized nations. More information about the Berne Convention is located online at wipo.org/eng/general/copyrght/bern.htm. These minimum rights go a long way in providing protection for copyrights of both citizens and noncitizens of Berne Convention member states.

Ambiguity can result in undue frustration and expense for everyone. It’s always best to be explicit and state, in writing, the nature of any transaction when copyrights are involved. Whether it describes what interest in a copyright is being transferred or how the copyright is being created, a clearly written agreement goes a long way in determining ownership and usage rights. Copyright ownership is something that should not be ignored. By establishing a simple procedure, you can be sure that what you pay for is your own.

Matthew Miller is an attorney-at-law in Solana Beach, California. He can be reached at: (858) 259-6969.

nts to sue someone for infringement. A certificate of registration can also be very helpful if the owner is attempting to get an injunction to stop an infringer. And if a registration certificate is dated before the copyright is infringed, the copyright owner is able to recover statutory damages, costs, and attorney’s fees.

Skateboarding is an international sport and business, and ownership of copyrights in other countries should be a concern to companies that export their products¿or plan to. While there is no worldwide copyright, there are conventions (agreements among nations) that have simplified the way owners of a copyright can receive foreign copyright protection. Most notably, the Berne Convention has established minimum rights that may be claimed in all member countries, which include all modern industrialized nations. More information about the Berne Convention is located online at wipo.org/eng/general/copyrght/bern.htm. These minimum rights go a long way in providing protection for copyrights of both citizens and noncitizens of Berne Convention member states.

Ambiguity can result in undue frustration and expense for everyone. It’s always best to be explicit and state, in writing, the nature of any transaction when copyrights are involved. Whether it describes what interest in a copyright is being transferred or how the copyright is being created, a clearly written agreement goes a long way in determining ownership and usage rights. Copyright ownership is something that should not be ignored. By establishing a simple procedure, you can be sure that what you pay for is your own.

Matthew Miller is an attorney-at-law in Solana Beach, California. He can be reached at: (858) 259-6969.