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Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 118780
Experience:  Attorney practicing all aspects of copyright/trademark law
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I designed a logo wife's former employer, a non-profit. I

Customer Question

I designed a logo for my wife's former employer, a non-profit. I also designed several other works, like brochures and templates. My wife was fired. I want to revoke my license, and not let them use my artwork any longer. I never transferred my copyrights to them. While I let them use my work, obviously, I was never paid or given consideration. I understand this to be an issue of a non-exclusive license, and a matter of whether that license is revocable.
Can I revoke my license, and compel the party to stop using my artwork?
Submitted: 2 years ago.
Category: Intellectual Property Law
Customer: replied 2 years ago.
To add: there was never an explicit licensing agreement. I was designing artwork as a favor to my wife. I would send them the files via email, or share on my personal drive, and say "use this". On other occasions, I worked directly with their web designer or publishers to have the right files.We never had an explicitly license agreement at all.Thus, this appears to be what I understand is an "implied license". I'm mainly wondering if, after they've started using my logo and artwork for about a year, I can revoke this licence.
Customer: replied 2 years ago.
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Expert:  Law Educator, Esq. replied 2 years ago.

Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.

Absent a written agreement to the contrary, once you provided them the logo and told them to use it, you have given your consent to use your work. The problem is once they incorporated your designs into their work, this was considered a gift to the non-profit employer and they can assert a continued right to use the work. However, since you were never compensated for the work, your right to use your copyrighted work can be revoked as it was not implied it was an irrevocable license to use and in the case were you were not asked to provide it to them and you did so voluntarily and no consideration was given to you for it, you can revoke your consent. See: Nearstar, Inc. v. Waggoner, No. 4:09cv218 (E.D. Tex. March 2, 2011).

Customer: replied 2 years ago.
While monetary damages are probably small (if unlikely), what kind of statutory damages are possible here should I file suit?Once I chose to revoke their rights, I filed my artwork with the US Copyright Office (pending). I sent them a cease and desist, which they received, implying that further use of my artwork would be "willful infringement." I then started DCMA takedowns. Further, after my DCMA takedown notices, the party sent a "counter notice" (under perjury) that they believed my takedown to be a "mistake", and no further explanation or defense.Does the law support statutory damages, and legal fees should I proceed to find an attorney and file suit?
Expert:  Law Educator, Esq. replied 2 years ago.

Thank you for your reply.

If they were using it before it was registered, all you are entitled to is actual damages. If the copyright was registered to you prior to their use, then statutory damages can be up to $150,000. The key to registration to entitle you to statutory damages is that you had to register it within 3 MONTHS after the publication of the work or prior to the infringement. If you did not meet this deadline, you can only get an order ceasing the use of the work.

Customer: replied 2 years ago.
Just to be clear. I was letting the party use the work (not disputed). Later (over a year), I filed for registration with USCO and, the next day, sent a cease and desist. I gave them 10 days to stop using my artwork.I'm alleging that use prior to that day was fine; and everything after the 10 days from receipt of my cease and desist, is infringement.They proceeded to use my artwork after I sent them notice of revocation, and after I informed them I had filed to register my copyrights.Does their continued use of my artwork and infringement AFTER that day not constitute "willful infringement?" Does any of this change whether I might be able to claim statutory damages?
Expert:  Law Educator, Esq. replied 2 years ago.

Thank you for your reply.

Unfortunately, if you did not file for 1 year later or more, you cannot get statutory damages. You could revoke your license and get a court injunction to stop them from continuing to use it and any actual damages, but not the statutory damages as it was not registered in time, even if they are using it after as you said.