Legal eye Q3: Creative "theft"

Q: I know from experience that we have been used and abused by prospective clients when responding to a request to pitch with ideas & design work BUT what can we do to protect our considerable investment in this work we do on spec ? Most design agencies like ours operate on trust but there comes a point when we have to protect our interests. We recently had an incident where a business we had pitched to went with an alternative agency. That happens for all sorts of reasons and we accept that. However on seeing the campaigns produced it has been galling to see our ideas and creative treatment adopted with very little change. How do we protect ourselves ? Is there a low cost way to do this ? Are there terms we can apply when agreeing to prepare a pitch that will protect our work going forward and enable us to levy a charge if the client wants to take it forward with another supplier?

Hi, we're sorry to hear about the problems you've had.

From a legal perspective, assuming your pitch documents and designs constitute original work (i.e. the documents and designs have been produced as result of your own skill and judgement and not copied from other works) they will likely be protected as copyright works. Copyright is an automatic right which comes into existence on creation of a work (there is no need to register it). The owner of a copyright work has certain exclusive rights in respect of that work, including copying, which means that if a third party copies a substantial part of the work without permission, the copyright owner can bring a claim against that third party for copyright infringement. If successful, the remedies available to the copyright owner include damages or an account of profit and injunctive relief.

However, even if you can establish, as a matter of fact, that a prospective client has copied a substantial part of the pitch documents and designs (which is a qualitative test), whether, from a commercial point of view, you would want to bring a claim against them is another matter. Bringing a successful copyright infringement claim against a prospective client may allow you to obtain financial compensation and help you to establish a reputation for rights enforcement which could potentially deter others from attempting to copy future pitch materials. But taking legal action is a significant step and it would be advisable to consider the commercial implications of doing this. And it certainly would make sense first to instruct a law firm to assess the strength of your claim before starting down this route.

To help deter copying in the future, you should make clear to prospective clients, at the pitching stage, that you consider your work to be protected. For example, you could add the © symbol to your pitch materials. Although this would not give you any additional rights, it may help to alert prospective clients that you consider yourself to be the rights owner of the material you are sharing with them.

You could also consider including a brief statement within the pitch materials expressly stating that:

a) you are the owner of all rights (including all intellectual property rights) in the pitch materials and that other than use of the pitch materials as strictly required for the purpose of the pitch, no rights in any pitch materials are granted; and

b) the pitch materials and any information disclosed by you during the pitch are confidential and should not be disclosed to third parties without your consent.

By making clear that the pitch material and information being disclosed during the pitch are confidential, you may be able to seek action through a breach of confidence claim as well as/instead of an infringement claim, should the need arise.

Where possible, try to minimise the amount of work you carry out for the pitch itself and seek to enter into a services agreement with prospective clients in respect of early creative work/scoping. In this way you can build in contractual protections as well to bolster your rights. Of course, we understand that you have to win the pitch first, and this does create pressure to provide value during the pitch process, too. So, where you feel that you do have to provide fairly extensive work up front, you might also want to consider digitally watermarking any images and designs you create, to make it more difficult for them to be copied.

Of course, if you or any DCA member is considering taking action in response to any particular instance of copying and would like to discuss your options, we'd be happy to help.

Kind regards,

Wiggin