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socrateaser
socrateaser, Lawyer
Category: Intellectual Property Law
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Experience:  Retired (mostly)
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A customer is claiming ownership of all files

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A customer is claiming ownership of all files on my hard drive that may or may not relate to the final design; including fonts, rejected concepts, intermediary work not finalized or used in the final website design. I had to assign the copyrights to the customer who was holding payment hostage. The assignment does not reference in any way the physical property, only the IP rights, yet they claim to own everything I have done and are trying to prevent me from using my own work. Can they do this? Aren't the rights and material copies distinct and separate?

Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  socrateaser replied 11 months ago.
Hello,

If the customer owns the copyright to the final website design, then the customer has the right to the fixed expression of that creative work. Individual components, to the extent that the reflect the final work, are subject to the same copyright as the final work. Rejected concepts and intermediate designs, which are substantially similar to the final work would also be subject to the final copyright.

The question of what is or is not substantially similar to the final work is an issue for a jury to decide. If you refuse to turn over the work that the customer claims is part of its copyright, then the customer will have to sue you and prove that you have a copy of the copyright protected materials that you assigned to the customer.

But, how would the customer prove that you still have these materials. You may have destroyed them in the process of creation.

I don't know what you plan to do with these other items, but you can't turn them over to the customer, if you don't have them anymore (hint). And, the customer can't sue to recover them, because there is nothing to recover.

Please let me know if my answer is helpful, or if I can provide further clarification or assistance.

And, thanks for using justanswer.com!
socrateaser, Lawyer
Satisfied Customers: 34140
Experience: Retired (mostly)
socrateaser and 3 other Intellectual Property Law Specialists are ready to help you
Customer: replied 11 months ago.

Thank you for your reply. I understand the transfer of rights, however my questions refers to the fact that the agreement that I signed transfers ownership of only the rights, not ownership of the work itself.


Perhaps I do not understand the full meaning of the following from the US Code:


§ 202 . Ownership of copyright as distinct from ownership of material object. Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.


 


I believe this means I own the work and they own only the rights - so I cannot do anything with the work without their approval and it also means that I do not have to give them the work - other than what I have already provided which is the final files to the project. Is this correct?


 


 

Expert:  socrateaser replied 11 months ago.
If you transfered your ownership in the original copyright, then the transferee becomes the original author. That makes any work that you create, which is substantially similar to the transferred work, a copy of that work. So, despite your work being created prior to the transferred work, your work is a copy, the same as if it had been created after the final version.

Thus, the only question that exists, is whether or not your work is in fact substantially similar, or is it an entirely different work.

Example 1: You draw a caricature of a mouse. Then you draw another. The two mice look nothing alike. You assign your copyright to a purchaser. You own the copyright to the first mouse -- the purchaser owns the copyright to the second mouse.

Example 2: Same facts as above, only the two mice are substantially similar. The purchaser owns the copyright to both mice. Your first mouse, despite its being drawn first, is now the copy, because you transferred your rights to both mice to the purchaser.

You own the physical manifestation of the drawing of the first mouse, but, as it's a copy of the second mouse, the purchaser can sue you for infringement for having made a copy, even if you do nothing with that copy.

Relating this back to the various creative work on the hard disc -- you own that work, but if it is substantially similar to the work that you have assigned to the customer, then you can be sued for infringement.

So, the question is: Is the work on your hard disc substantially similar to the work that you have assigned to the customer? If yes, then while the customer cannot force you to turn it over to the customer, the customer could sue you for infringement. But, if you don't have it anymore, then the issue is moot -- there's nothing to sue over.

Conversely, if you create another website with your prior work, and it turns out to be substantially similar to the work you assigned to the customer, then you can, once again, be sued for infringement.

I don't know what your objective is here. But, given the ephemeral nature of digitally stored creative work, the easy answer to the customer's demand is to simply tell them that you've destroyed all of the prior work, and that's the end of the matter.

Then, if you use that work in the privacy of your own environment to create a new work that is not substantially similar to the assigned work -- then no one will know, and there's nothing that they can do about it, because the only work that will ever be visible to others is the new finished product, which is not substantially similar to the assigned work.

Hope this helps clarify the issue for you.

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