Any young professional, across any discipline, desires control over their work and credit for their insight. In design, unfortunately, these wishes may contravene the goals of the clientsuch as securing the exclusive use over the work produced, or maintaining secrecy to upcoming commercial projects, or risking the firm's liability exposure. Common among young designers is the notion that the firm owns everything its designers create. This article intends to clarify those perceptions, explain the rationale, and illuminate the opportunities where employers more often foster, rather than discourage, an employee's most creative endeavors.
After speaking with lawyers, students, designers and firm leaders, it turns out that this question does not involve the complex web of legal theory that I anticipated. What was obvious was the disconnect between young practitioners and principals. While the legal question has a straightforward answergrounded in doctrines of contract law, liability and intellectual propertythe larger issue appeared to be the serious miscommunication in the practices and policies of firms regarding employee-generated intellectual property. The willingness of major design firms to discuss these issues revealed that employers understand that employees often feel anxiety towards their employer regarding the ownership of their creative capital. The reasoning, however, behind intellectual property policies is designed neither to create an umbrella of ownership around employee-generated intellectual property, nor to subsume an employees' work and claim it as their own. Simultaneously, many design firms, I learned, do encourage the volunteerism, activism and creativity that young designers often seek when they're off the clock.
The Heart of the Matter
There is significant concern among young practitioners regarding attribution on firm projects, and that the lack of credit correlates to a lack of ownership over their creations. The premise for this theory, however, seems to have little to do with policies of intellectual property, and may have more to do with the "star-architect" phenomenon, begging the question: can any designer make their own name while housed in a major designer firm today? The concern for credit, however, should not complicate the conversation when understanding employee creative output and the firm's intellectual property policies.
"No one ever really teaches architects how the law works in terms of design credit," commented James Michael Tate (who professionally goes by Tate), a trained architect pursuing his professional license. "While we take a course in professional practice, it seems like every office has its own interpretation of what 'use of design' and 'design credit' means." He noted, "I have friends that aren't permitted to show work that they've done for past employers in their portfolios." Stories like these are common among young designers; the image of the partner gallivanting about while the young architect sits hunched over their desk all night long looms large. Furthermore, designers may sign away additional rights simply by virtue of employment, "At larger offices, I've heard it's not uncommon to make employees sign agreements not to pursue certain types of projects for a set number of years after working there," Tate added.
This typical disconnect causes many young designers to seek alternative ways of demonstrating their skillswith grassroots design competitions, for instance. The hypothetical could then arise: what happens when a young designer, housed in a large firm, submits the winning entry for a design competition where the project gets built, but later causes injury by virtue of a design defect?
It's here that the connection between the employee's creative output and the firm's ownership intertwine.
A Short Primer on Intellectual Property
Intellectual property arises in four forms: (1) copyrightsan author's exclusive set of rights to the expression of an idea in a tangible media; (2) trademarksany symbol, noise, color, phrase or word that acts a source identifier; (3) patentsprotecting inventions; and (4) trade secretsbusiness practices that provide a competitive advantage. In the creative process, a multitude of drawings, sketches, and renderings are developed; these are copyrighted works.
Who owns those works generated by employees? Joshua Prince-Ramus, President of REX, put it simply: "all employees produce works for hire." The Copyright Act of 1976 states that copyright ownership "vests initially in the author or authors of the work." As a general rule, the author is the party who actually creates the work, the person who translates the idea into a fixed, tangible expression. The Act, however, carves out an important exception, for "works made for hire." If the work is for hire, "the employer or other person for whom the work was prepared is considered the author and owns the copyright." (The seminal case in this conversation is the Supreme Court case, Community for Non-Violence v. Reid (1989).)
Differing Rationales Across Differing Disciplines
Across architecture, industrial and graphic design, the policies remain generally consistentthe firm owns all employee intellectual property. A similarly common thread across disciplines is the concern regarding conflicts of interest and protecting the firm's competitive edge. "I can't stop someone from working until the wee hours of the morning for a book jacket for an author they know. But what I wouldn't want is my employee working until the wee hours for a competitor or another firm, because I am paying for that individual, their workspace, and their health insurance, so it's not right then for them to work on something competitive," commented Ken Carbone, Co-founder and Chief Creative Director of Carbone Smolan Agency (CSA).
The explanation for these policies varied by discipline and firm size. Architects I spoke with explained that their policies are purely a matter of liability; the concern being that an employee who maintains their own intellectual property may expose the firm to a potential lawsuit. Industrial designers are more concerned with ensuring that a client is delivered the full and exclusive array of intellectual property that the firm is commissioned to design. Graphic designers further utilize the agreed upon scope of work in delineating ownership of intellectual property.
How can a work produced by an employee be held to be the work of the firm? Quinnipiac University School of Law Professor John Morgan explains,
Liability is likely to be based on how the individual is identified. If the individual makes clear that this is not a part of the work of the firm but is solely the work of the individual, then there should be no liability on the part of the employer. If the firm permits the individual to identify with the employer and the employee does so, the employee would appear to be working as an agent of the employer. That said, an employeeeven moonlighting on a non-firm projectmay expose the firm to liability should some injury be created by the work.
Determining whether a firm may be held liable for the work of an employee is not a black or white situation, as Professor Morgan suggests, but rather rests on many variables: did the employee produce the work on their own time; were they compensated by another source for the work; did the employee use the firm's technology and resources to create the work? The policies of firms that do not permit outside endeavors suggest that they prefer the certainty and control to all potential liability exposure.
Other firms similarly minimize exposure but encourage extra-curricular endeavors. When asked further, Prince-Ramus explained, "work that employees produce during their own time is entirely theirs. However, they must get permission to use the office's resources (computers, printers, foam cutters, etc.) and must reimburse the office for any expenses incurred (model supplies, plotter paper, courier, etc.)."
"Clients of design firms demand to own all intellectual property developed for them," explained Yves Behar, founder of fuseproject, on the traditional model of intellectual property ownership in industrial design firms. "So conserving intellectual property for industrial design firms goes contrary to the very reason they get hired by their corporate clients." Mitch Pergola, Managing Partner of fuseproject, added, "we have to demand the same thing from our employees; if the company has to give up all rights to intellectual property, then it rolls downhill [to the employee]." That said, fuseproject encourages their employees to participate in extracurricular endeavors such as design competitions, and employees host brown bag lunches to share their newest independent creations. Pergola noted, "we want to give our employees the guidance required to execute extracurricular projects appropriately."
The issue of an extracurricular project causing firm liability has not been an issue, Pergola explained. Most non-firm projects are conceptual and artistic, or are prototypes, and so few side projects reach the stage of commercialization. One may even draw the conclusion that the firm minimizes the exposure to liability via the encouragement of projects that canwhen gone uncheckedincrease risk. "There's a shelf life for any given creative person at any time;" Pergola expressed, "we want our employees' time here to be as rewarding and unfettered as possible."
Unlike industrial design and architecture, graphic designers are not often preoccupied with the potential for their work to cause injury. But similar to other design fields, intellectual property rights are typically given to the client, which therefore extends to employee work. Carbone Smolan Agency divides employee- and employer-owned work along the defined scope of work for a client. And so any creative capital generated outside that scope of work would be the property of the employee.
Employee policies are designed at CSA so that "if an employee brought us a product concept [a physical fastener for an exhibition CSA was hired to design, for instance] and that creation was viable in the marketplace, then we would have some kind of equity share in that project [with the employee-creator]," explained Carbone. That policy enables the firm to ensure that the best creative ideas stream through the firm (as opposed to the individual employee going it alone).
Additionally, by making employees aware of those hypothetical scenarios "we allow the platform for creative entrepreneurialism," Carbone highlighted. Anecdotally, a similar occurrence can be paralleled in the firm-client relationship. While working for a global product development company, CSA developed an imaginary brand for a food service business as a way of demonstrating the technical advantages of a particular product. The intellectual property associated with developing that imaginary company was transferred to them from the client; a heartwarming story in a world of alleged corporate greed.
A firm's intellectual property policy must balance both the needs of their employees and those of their clients. An employee's intentto engage in non-firm work or claim certain firm work as their ownmay compromise the goals of exclusivity, secrecy and liability on behalf of the client. Furthermore, extracurricular endeavors can shift an employee's focus away from the firm. "I think a young practitioner really needs to roll with the wishes and mores of their employer, earn their stripes, and then bring up the notion of 'extracurricular' activities once there's a mutual comfort," commented Pergola. "Bi-directional dedication and investment is everything in terms of team-building in this business, but I don't think it's unreasonable for a salary-paying employer to expect a younger team member to pay some dues before they start to focus on something other than the internally-focused tasks at hand."
Employees must shoulder the responsibility to educate themselves on their firm's intellectual property policies. Most likely, a firm encourages volunteerism, activism and non-firm creative endeavors. If it doesn't, suggest a policy to the HR department. And remember, a young professional is not chained to a consultancy; venture backed start-ups are always looking for designers, and there you can own your intellectual property...and part of the business.
Katy Frankel has written several articles on intellectual property and design, and has worked with Architecture for Humanity, Creative Commons and The Designers Accord. She is currently the Economic Development Coordinator for Common Ground and is a graduate of Cornell University and Quinnipiac University School of Law.