Contractor Accused of Passing Proprietary, Copyrighted Information to a Third Party

[Gadgetgurlz]

I am an Independent Contractor and web/graphic designer, and my client thinks that I have appropriately shared proprietary information.

The information they claim is proprietary is an electronic newsletter that goes out to over 5000 subscribers (of which I am one since I have also been a customer of my client's business).

At the bottom of the newsletter, there are links to share the newsletter on Facebook, Twitter, Google Plus, and to forward to friends.

I forwarded several emails newsletters at the request of another independent contractor (who was later hired as a FT employee) with whom I had collaborated on the newsletter design and, at times, on the content as well. She herself had also been a customer of the client and a subscriber of the newsletter, but had accidentally deleted her personal copies from her email account.

She asked me to forward her only those newsletters that she (or we) had worked on together in the past to present in a portfolio to a prospective employer with whom she was interviewing.

I do not have a written contract with this client assigning copyright of any graphic design work I have created for this client, including the enewsletter customized template, whereas she wrote content for the newsletter both as an Independent Contractor and, later, as a full-time employee.

The content of the newsletters has also been published on the client's website and facebook page - including promotions, incentives, etc - and the newsletters themselves are currently archived online on mailchimp.

1) Do enewsletters in this instance constitute proprietary information?

2) Did I unlawfully or I appropriately share a proprietary work?

3) Does my client own full copyright to the enewsletter which I designed?

4) Does usage of the newsletter in a portfolio violate any copyright laws or is it protected under fair use?

Any help clarifying these points would be extremely helpful.

[flyingron]

1) Do enewsletters in this instance constitute proprietary information?

If it wasn't intended to go outside the company: yes. However, if they were also on a public page, it would be hard to argue that they were proprietary.

2) Did I unlawfully or I appropriately share a proprietary work?

If there was copyright that you didn't have authrorization, you're technically in violation of infringement.

3) Does my client own full copyright to the enewsletter which I designed?

Work for hire is owned by the person who hired it. In the case of ambiguity however, the law sides with the creator typically. Did you have a contract?

4) Does usage of the newsletter in a portfolio violate any copyright laws or is it protected under fair use?

Depending on just how you use it, there may be a fair use defense here. However, that's not going to prevent you from being sued for infringement.

[adjusterjack]

Any help clarifying these points would be extremely helpful.

Not sure why it makes any difference.

You ticked off your client. If you want to get into a "legal" spitting contest with the client you lose the client. If you want to keep the client, apologize and find out how to resolve it.

In the future, use contracts to specify who owns what. And hire a lawyer to write you a good one.

[Gadgetgurlz]

Work for hire is owned by the person who hired it. In the case of ambiguity however, the law sides with the creator typically. Did you have a contract?

No contract whatsoever; and I did not assign any copyrights of my newsletter design to the client. As standard practice, without a written contract - I hold all exclusive copyright to my creative work.

[DaveM]

Reread Mr. adjusterjack's reply, He's giving you good advice.
To answer your questions:

1) Do enewsletters in this instance constitute proprietary information?

Yes, almost certainly.

2) Did I unlawfully or I appropriately share a proprietary work?

From your story, you shared some newsletters with a hired co-worker so that she could complete her part of the project. This strikes me as appropriate. You say that your client also thought this appropriate. So why is this an issue? Who else did you give propriety information to?

3) Does my client own full copyright to the enewsletter which I designed?

From your post it seems that designing the enewsletter was part of the job, so yes, the client has the copyrights.

4) Does usage of the newsletter in a portfolio violate any copyright laws or is it protected under fair use?

That's not what "fair use" means. Using your client's work in your portfolio is using your client's copyrighted work. This should have been dealt with by the contract that you didn't use. This strikes me as really trivial though. Write to them and get permission unless you've burned all of your bridges

[adjusterjack]

No contract whatsoever; and I did not assign any copyrights of my newsletter design to the client. As standard practice, without a written contract - I hold all exclusive copyright to my creative work.

Actually, it's just the reverse.

When you do work for hire and you don't have a contract, the hirer generally owns the copyright.

The "standard" practice of not having contracts is a foolish practice, indeed.

[Mr. Knowitall]

From your post it seems that designing the enewsletter was part of the job, so yes, the client has the copyrights.

A work for hire is defined by statute as follows:

* * *

A “work made for hire” is—

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

* * *

This is a situation involving an independent contractor, not an employee, so subsection (1) does not apply. There is no contract, so subsection (2) does not apply. Thus work created under the oral agreement does not fall under the definition of "work for hire" that would result in the transfer of copyright, even though the client would obtain a license to use the work it commissioned. However, any retention of copyright relates only to the contractor's original work, and not to any materials obtained from the client. It also would relate only to the original portions of derivative works based upon the client's copyrighted materials.

Gadgetgurlz, fair use issues are summarized here; but this isn't a situation in which the use is yours. It's a situation in which you provided the newsletters, which are largely comprised of the client's copyrighted content or work that is derivative of their content, for use by a third party. If the materials are publicly available on the client's website or a public archive of their mailing list, then it would have been appropriate to tell the subcontractor to obtain her portfolio materials from those locations -- although if they are available from public locations, for free, it's difficult to see how the client is going to be able to claim any economic harm from the inclusion of the newsletters in a portfolio. No matter what else happens, if you don't mend fences with this client they won't be using you for any future jobs.