I've recently started a new business and hired a graphic designer to do the company logo. Loved the work, but when he asked me about using it on his portfolio, I did explain that he can only use items for which he has permission (and for this logo, he wouldn't).
My 6th sense told me to make this designer sign a contract, but I finally relied on good ol' trust. Now, I've been told that he's gone ahead and used it on his portfolio.
All I have is an email and no signed contract. What steps can I take in this case to ask him to take it down? I'm in Canada if this helps.
I'm thinking of trademarking the business name, slogan and the logo. After that, it should be legally acceptable for me to ask him to remove it, right?
I don't understand why you don't want him to add the logo to his portfolio other than the fact you want to hide that you hired a freelancer to design your company logo and want to basically take credit for his work by making it appear as though the logo was created in-house or something. That was an assumption, but it seems like the only logical reason. Now back to the question.
What your email basically equals is a verbal agreement, even though it's in an email I think it's classed as a verbal agreement which can be held up in the court of law (but you wouldn't go that far anyway). I would send them an email saying something along the lines of: "Hi, I noticed that you included the logo you designed for us on your portfolio. As per our original verbal agreement, can you please remove the work from your portfolio?" Remember to be nice about things, if you go making accusations or threats you could be the one in trouble here. But having said all of that, if he doesn't remove the logo what have you lost? I seriously doubt the designer is claiming ownership over the logo by putting it on their portfolio anyway.
I can't speak for Canada as I am in the US. I can tell you that is common for a designer to be able to say he designed a logo. For example Rob Janoff designed the Apple logo and Paul Rand designed the IBM logo.
Since you want something "out of the ordinary", that is the author to not be given credit for his work, it would have been best to discuss this up front before the work began. Further since it is standard practice for any creator (author, painter, graphic artist) to "sign" his work, it is natural that your graphic artist would assume that would apply in his case as well. Since he asked you about including it in his portfolio, it is clear that he did not initially intend to do anything behind your back.
If you push things, the issue will be what rights exactly did you purchase in the work? This is why movie contracts go to many pages. Initially an artist owns his work, and generally the rights in the work which are transferred are limited. So for example he might contend that what was transferred was the right to use the image as a corporate logo only. This is like hiring a portrait painter to paint your likeness. By default what you get is the painting; you do not get the rights to sell prints of the painting or use it on TV for example.
I am curious as to your objection to having it be know that he is the creator of your company's logo? Since Apple, IBM and virtually all major companies have no problem with the world knowing who created their logos, it wouldn't be an issue to me.
So this person uses your logo on his portfolio, but loses using you as a reference. Seems like the person has burned a professional bridge.
It's his/her work and he/she must have licensed it to you in some way. This contract would give you rights to use the work, but even that could not remove all the rights an artist has to a work depending on his/her country of resident.
So if you have no contract giving you rights I think you should be greatful the artist lets you use his/her work as your logo and don't sue you for copyright infringement. :)
What you should have done is make it clear that you own the copyright on the logo. You want to make sure it was done as a "work for hire". See if you can get him to sign that over to you.
That said, then you should allow your designer to use the logo on his portfolio with your permission. It can even have a "(c) Your company name" on the page to be explicit, I doubt he'll mind.
My designer gave me a link and nice little blurb. That can't hurt with your pagerank.
As others have said, why do you mind him using it?