Who own digital files commissioned by artists for advertising?

I represent a small group of artists who have paid to have an advertising brochure designed and printed for a studio tour each year. This year we are changing graphic designers and have asked for our digital files which we have paid to have done each year. The designer will not forward them to us. This is the rider attached to the end of his email which he says means the files are his property.

"Any files attached are property of xxxx company and can only be used as instructed by xxxx company.  Files cannot be altered and/or parts extracted for any other use.  By using this file in any other way than instructed by xxxxx you are performing an illegal operation which can and will result in legal actions if necessary."

In the past he has forwarded files to other designers. We paid for the design work. The files would not be used except for the advertising purpose they were created for.  

He has received files from other design firms in order to produce our work.

In particular, the most important file we need is one that was sent to him from a different company in 2008 and he did not create it. It forms the front of our brochure. We need the background painting. The overlay of words can be redone.

If he were to forward to file to us, isn't he giving us permission to use the files.

What can I say to him to convince him the files belong to the group of artists and they need to be released?

Asked over 9 years ago in Ontario
Categories: Contracts  Business Law  Patents, Trademarks, Copyright

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Andrei Mincov

Answer by Andrei Mincov

VerifiedBritish Columbia lawyer

In the absence of a written license / assignment agreement, the artists have no proprietary interest in the brochure created by the company.
They will probably be deemed to have an implied limited license to use it, but the scope of it will be fairly narrow.
With respect to the prior work, the company does not become its owner simply because you sent the background painting to the company.
Economically, it could be cheaper to have someone redo the painting than to sue the company for breach of an implied obligation to return underlying works.
But you have a trump card in the sense that the design company may agree to return the background painting in order to not have you make the information public about how the company treats its clients.
Your case is a perfect example of why contractors MUST have a written agreement with their clients that carefully and unambifuously describes who owns what and under what conditions.
Andrei Mincov
Mincov Law Corporation


Posted over 9 years ago

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Please note that this is for informational purposes only and does not constitute legal advice to you. Legal advice pertaining to your particular situation can only be provided by a lawyer who has met with you to obtain all pertinent background information necessary to give you a formal legal opinion. For formal legal advice, hire a lawyer (many give a free first consultation). Contact Andrei Mincov, or search the Lawyer Directory.

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