Simple ways to avoid costly mistakes:
Who owns your marketing designs?
Many costly legal disputes arise out of basic contractual mistakes. In most cases simple steps can be taken to avoid these costly contractual mistakes.
In this article we look at who owns your marketing designs.
Many businesses use external consultants and other suppliers to create marketing materials, art work or photographs for them. In these circumstances it is important to be aware of who owns the intellectual property rights in the materials. We often get asked the following:
If we use a consultant to design our marketing materials, do we own copyright in those materials?
Some businesses may be surprised to learn that the copyright in materials created by external consultants actually belongs to the consultant by default, rather than the business that is engaging him to create the materials.
Does this mean that the consultant will be able to use the materials?
If the engagement letter or any other document does not deal with the ownership of copyright, the consultant will be able to use the materials for other projects. You could therefore find that one of your competitors is able to use the same materials if the consultant is engaged by them. This could be particularly damaging if your materials are quite innovative.
What happens if one of our competitors just copies our materials without the consultant's consent? Can we stop the competitor?
You would not have a claim for breach of copyright as you would not own the copyright. The consultant would have a claim for breach of copyright, but that would be of no use to you.
Will we still be able to use the materials after the engagement is terminated?
You will only be able to use the materials if you have a licence from the consultant. Such a licence can usually be implied. However, whether such a licence can be implied will depend upon the circumstances of the engagement. It is better to avoid any doubt by any potential disputes by having the issue clarified in writing at the outset.
How can we prevent this from happening?
The best solution is to ensure that, upon engagement of the consultant, all copyright and other intellectual property rights in any materials that are produced for you are assigned to you. To do this, you will need to ensure that the engagement contains properly drafted clauses.
If you have already engaged the consultant and there was no assignment of the intellectual property rights in the engagement letter, you will need to get the consultant to enter into a later assignment which he might be reluctant to do without further payment.
If you would like any further information on the assignment and ownership of intellectual property rights, please contact Simon Bates on simon.bates@harveyingram.com or call 0121 214 1205 or 0116 257 6146 .