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[njadiablo]

I belong to a youth sports league and 2yrs ago a parent approached us to create new logos for the uniforms. Eventually he had taken a position on the excutiveboard. During the time in his position he presented new logos and designs for unifroms,t-shirts, website, etc. While he was on that board he got approval to move forward with unifroms, website etc. He was in charge of ordering the uniforms from a current vendor with the organization. He presented to the whole league his intentions of changing the logo and volunteering his time to the organization to do this work since he was by trade a artist/designer. After the first season with all the new logo's he became unhappy with the club and is no sending letter to cease use of all logo's inluding uniforms with said logo. Since he knows it cost the league 30k to get those unifroms printed he knew that forcing us to put them aside would cripple or cause the club to shutdown. So the question is what is the clubs rights? This seems to amount to extortion since he knew the copyright laws prior to offering the logos.

We are located in NJ and in dire need of legal Assistance and can't afford to hire an attorney.. Keep in mind that no one in this club is paid this is an all volunteer club.

[Zonath]

Interesting question...

Well, as far as actual ownership of the copyrights go, there really isn't much of a question there, since the guy who designed the material wasn't an employee of the club when he did so, and you all apparently didn't think to secure anything in writing which would actually transfer the copyright to the club.  For the sake of the question, we'll just assume that the logos are sufficiently expressive to qualify for copyright protection, since we can't see the logos and generally a pretty minimal amount of expression can qualify for protection.

So really, the questions here would be: 1. Does the club have some sort of license?  and 2. Does the club have some right to use the logos irrespective of license?

Starting with the question of the license:  I think it would be pretty easy to argue that the club has or had some sort of implied or express license from the designer that they could use the logos, since the designer pretty explicitly designed the logos for the club and allowed them to use it on their uniforms and such.  At the same time, the license may not be irrevocable, so the designer may be able to terminate the license simply by giving notice that he wished to do so, which would require the club to cease any infringing use.  I also think that, without something in writing which stated that the licenses granted were irrevocable, there would be some difficulty in arguing that the designer can't revoke his license.  Obviously, we don't know what may or may not be in writing there, but assuming there's no writing, then the club may be on shaky footing right at the starting point.

The question of what rights the club might have to use the logos irrespective of license is somewhat more complex.  Now certainly, the issue of the uniforms is somewhat straightforward, due to 17 USC § 109:

(a) Notwithstanding the provisions of section 106 (3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

(skipping down a bit)

(c) Notwithstanding the provisions of section 106 (5), the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.

So, since the uniforms were 'lawfully made' since they were made with the express or implied license of the designer, the club (which owns the uniforms) would probably be within its rights to use the uniforms and display them publicly "to viewers present at the place where the copy is located."  This becomes sort of problematic where the games might be televised, but let's just assume that this being a youth sports league, the possibility of the games being televised is somewhat remote.

Likewise, any copies of the logos which were created prior to the revocation of the license could also be used and displayed, so if the league repainted its scoreboard with a copy of the logo while the designer was still on-board, then they should have no problem using it.

The real problem comes in where any further copies of the logos are made, since those copies could be considered to be infringements upon the copyright of the designer.  So, things like promotional materials, game programs, replacement uniforms, new equipment bags, and so on, should generally not have the copyrighted logos on them.  The league should also probably cease the use of any of the logos on websites, since use of copyrighted materials on a website isn't protected by 17 USC § 109 at all.

While the league isn't facing certain immediate financial ruin because it can't use its uniforms anymore, the league should still certainly think about phasing out its use of the logo, since the specter of copyright infringement will probably eventually hinder the league's ability to promote itself.  Of course, once the league goes out and looks for a new logo to replace the old one, someone should certainly get to a copyright attorney and have them draft up a simple assignment agreement which has the artist giving the league the copyright to the logos.  If the league can afford $30k for uniforms, budgeting in a few hundred for the advice of a copyright attorney shouldn't be that difficult. 

And I suppose that's really the only real bit of advice you should be taking away from this post: Get the advice of an attorney.  Your question here raises a lot of issues which can't really be answered fully by someone a thousand miles away, and you shouldn't take anything I've written here (or which anyone else may write) as a comprehensive analysis of your situation. Heck, I might just be completely wrong about everything I've just written. If this league really cares about staying in business and protecting itself from claims like this, there is really no adequate substitute for an actual attorney who can sit down with the league directors and feel out whatever legal issues the league might face.  If your league gets a bit lucky, they may even be able to find an attorney who would give a bit of legal advice either at a reduced rate or else as a volunteer.