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| Barbara Berschler |
[Editor's note: This article is the second piece in a two-part series on intellectual property. Part one can be read here.]
Now that you have a general background of the different kinds of Intellectual Property (IP) you may encounter, let’s examine some situations in which IP issues may arise and some approaches you may wish to take in response.
The first question that you should always ask is "Who owns the IP?" In the case of copyrighted works, the owner of the copyright is usually the one who created the work. However, if an employee creates the work in the scope of her employment, then her employer owns the copyright in the work.
Other ways that the ownership of the copyright in a work can be acquired are through an assignment of the copyright or through inheritance. If the work has entered the public domain, then anyone is free to use the work without permission. An example of this would be "Romeo and Juliet" and "West Side Story."
In the case of trademarks, the owner of the mark is the individual or entity that uses the mark in association with the services they offer or the goods that they sell. The trademark ownership rights are developed as the person consistently uses the mark in association with their enterprise. One need not file for state or federal trademark registration in order to acquire ownership rights in a mark.
If in the scope of your work, you are asked to incorporate the work product of someone else—whether it is your client or a contractor—it is best to know whether the supplier of the IP actually has the authority to let you use it. This is important because some infringements of IP, such as under copyright and patent law, are based on strict liability. In other words, it does not matter that you did not know you were making use of someone else's work without permission. You can be held liable for the infringement, nonetheless.
Another situation that can be problematic occurs when you are signing off, so to speak, on the project. Will your client be able to make full use of the final product? In the case of providing trademark designs, there could be the sticky problem that you did not get the assignment of the copyright for that work from the mark's designer. Merely paying for the job of designing a logo does not mean you also acquired the copyright in that design. There would always be the possibility that the designer would appear at a later date and claim their rights.
Here are some real life situations you may encounter along with some best practices you may wish to adopt:
Situation 1
You are asked by your client to develop a marketing campaign for a particular mark. Either your client brings you the logo already designed or you contract out to have a design prepared. While it is all well and good that your client uses the logo effectively as a trademark, what if, for example, the mark is being used for designer jeans, and the product becomes wildly successful? If your client does not own the copyright in that design, they may be greatly dismayed when the mark’s designer calls up and demands to be paid to avoid a claim of copyright infringement.
One method to avoid such a result would be to require any contractor you work with to include in their agreement that they “assign” any rights they may have, including copyright, to your client. Likewise, in the case of your client bringing you a logo, ask to see the underlying agreement for the creation of the work. If there is no reference to an assignment of the copyright in the work, alert them to the potential problem and suggest they consult an attorney.
Situation 2
Your client brings you photographs to include in your project. Suppose the client found the “perfect” picture on the Internet or it was one that she shot at the company picnic. In either case, your client views the photograph as capturing the essence of the company’s mission. But how do you know whether your client is authorized to let you incorporate that work into the website or brochure you were hired to prepare?
Just because it was easy to capture the photograph from the Internet does not mean your client had any right to do so or to use the picture in anyway. In addition to your client not obtaining the proper license to use it, there is the possibility that the site where your client found the picture also did not have any authority to post the photograph.
Because copyright infringement is a matter of strict liability, knowing the provenance of each photograph or piece of artwork appearing in your end product is critical not only for your client’s protection but for yours as well.
Incorporation of the company photograph in your work product could also pose problems. Individuals attending a company sponsored event do not necessarily check their right of privacy at the door. If you are going to use photographs which clearly can identify people, it is wise to obtain their permission in the form of a release. One should be particularly careful to get the permission of a parent if you intend to use pictures that have children as the subject.
As these examples illustrate, IP issues can affect your work product. In order to avoid their having a negative effect, you may wish to develop in-house procedures specifically directed at the incorporation of IP in your projects.
A first step could be to have all standard agreements with your customers, contractors and employees reviewed to assure the control of the IP that you need and that you are not overstating what you can provide. Follow up to be sure that all contractors and employees have signed agreements which make it clear who owns the resulting intellectual property.
By having a clear awareness of where IP issues may appear, you are more than halfway to making the correct choice. To avoid disasters, develop best practices and periodically check that they are being implemented. Benjamin Franklin’s saying that “An ounce of prevention is worth a pound of cure” remains relevant.
Barbara Berschler is a general business and commercial law attorney with a particular focus on intellectual property issues associated with copyrights, trademarks, licensing agreements, trade secrets, Web site and software development at Press Potter & Dozier, LLC. She can be reached at [email protected].