Chances are, if you’ve had the pleasure of getting hitched you will understand the slight feeling of moral outrage when you realise your wedding photographer owns the copyright in your wedding photos. (“But they’re photos of US!?!”).
It’s the same deal with any third party you commission to undertake creative work on your behalf. Although you may not feel the same way about your company as your spouse (if you do, seek help immediately) the same concept applies. It’s a common pitfall in business, but one that can be easily avoided by taking a little time to understand the basics of Intellectual Property ownership.
Dressing the shop window
In marketing terms, a company’s logo and website are its most important assets.
The logo is the kernel at the core of a company’s brand which creates a vital link to what you do in the mind of your customers. We all understand this as consumers- certain logos create good feelings urging us to interact with that company, and others… well… the opposite (I’m thinking low budget Irish airlines). The website carries the brand, and reinforces the message which we want our customers to receive.
But does your company even own these assets?
Farming it out
Most of us pay someone else to design our logos and author our websites. Regardless of whether there is anything written down on paper, this type of transaction creates a contract under UK law. You pay someone to create and deliver an original work for your company’s use.
Let’s say you’ve got a name already. You ask a third party to create a logo and website with some original copy. This attracts several types of Intellectual Property right, the most common of which are:
- Unregistered and registerable trade mark rights in the logo;
- Copyright in the artistic work of the logo;
- Copyright in the artistic works of the website (pictures, layout, etc);
- Copyright in the copy (a literary work);
- The right to file registered designs for the appearance of the logo and website.
So, who owns all this stuff?
You will retain the right to file your original trade mark (i.e. the brand name) but there is nothing in UK statute which automatically transfers ownership in the other IP rights listed above from the contractor to the commissioner of the works. In terms of whether there is an implied transfer of rights, the leading case on the matter says that the court should only imply the minimum necessary contact terms. Therefore, you would (of course) have the right to reproduce the logo and publish the web copy, but probably only under a licence from the contractor. In other words, you wouldn’t own the rights, you would be licensing them from your supplier!
What should I do about it?
Don’t end up in court!
There have been some recent high profile cases on this kind of thing (brands including Innocent™, Doc Martens™ and Classic FM™ have featured in this kind of ownership dispute). The key message is to sort out IP ownership from the start. Have your contractor assign all prospective IP rights to you as part of the contract. The paperwork is straightforward and can be prepared by a solicitor or attorney. It will cost you a little, but it’s a lot cheaper than going to court!