Rohto hired graphic designer Hirose to create graphic designs for their Pansiron Trim medication for gastro-intestinal disorders.
Who: Rohto Pharmaceutical Co Ltd, estate of A M Cassandre and Hirose
Where: Osaka District Court
Rohto hired graphic designer Hirose to create graphic designs for their Pansiron Trim medication for gastro-intestinal disorders. They signed a contract providing that Hirose would be liable if any copyright litigation arose out of the use of Hirose's work. In time honoured fashion Hirose took his inspiration from some designs by one Alan Fletcher appearing in a Pentagram design book entitled "Ideas on Design". The caption under Fletcher's design included an acknowledgement that it was derived from an original poster entitled Dubonnet by the famous French graphic artist A M Cassandre. AMC died in 1968 and his work was therefore still very much in copyright.
Hirose approached Pentagram for consent to borrow from the Fletcher design, but fatally did not ask for clearance from the Cassandre estate, who later sued. The Cassandre estate won the case, the Court regarding the get-out clause in the Hirose/Rohto contract as only having effect between the parties to the contract containing it. As such it did not absolve Rohto from legal responsibility to the Cassandre estate for the infringement which the Court held had occurred.
The damages awarded were assessed at 2% of the sales of Pantiron Trim during the period in which the offending advertising was used, totalling just over 29million yen.
Why this matters:
Often, carefully drafted clauses in contracts commissioning creative work seek to place responsibility on the supplier for ensuring no copyright or other third party rights are infringed. These cannot, however, stop an aggrieved copyright owner from suing the commissioner if it was part of the process of publishing the allegedly infringing material.
The commissioner may be able to join the designer to the proceedings and claim an indemnity in that way, but the designer may not be good for the money unless he or she has PI cover, something else worth dealing with in the commissioning contract perhaps.