By Barbara I. Berschler, Esq., Press, Potter & Dozier, LLC
In Part 1, which is elsewhere in Insights, I described in general the broad array of formats that intellectual property (IP) can take so you will be in a better position to identify an IP issue when it presents itself. In Part 2, I will examine some situations in which IP issues may arise and suggest some approaches you may wish to take in response.
Who owns the IP?
The first question you should always ask is “Who owns the IP?” In the case of copyrighted works, the owner is usually the one who created the work. However, if an employee creates the work in the scope of employment, then the 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 “Westside 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 they sell. A not-for-profit enterprise can own a trademark. 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.
What should you be concerned about when using someone else’s IP?
If in the scope of your work, you are asked to incorporate work product of someone else, whether that 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. Therefore, it would be important to have all who provide you with content to represent in a binding way that they are authorized to use the IP and can let you use it as well.
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.
As you can see, IP can affect much of your work as a communications professional. Because the IP does not have the tangibility of real or personal property, the very fact that there is a potential problem with your use may escape your notice. Developing a better understanding of what constitutes IP and what are its special characteristics can protect you from making a costly mistake and allow you to better serve your clients.
What Steps Can You Take to Protect Both You and Your Client?
Here are some real-life situations you may encounter along with some best practices you may wish to adopt.
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 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.
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. As I pointed out in Part 1, the exclusive rights of copyright attach as soon as the work is fixed in a tangible medium of expression. 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 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 our 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.
3. Your client wants to “own” all of the intellectual property rights when you deliver the final product. Your agreement may say that they do. However, remember you can only give what you actually own. Think carefully before signing an agreement that appears to give blanket ownership of IP rights.
4. As part of a proposed marketing plan, all agree that it would be great if you could get the endorsement of a relevant celebrity to use in the end campaign. If you think this would be offering a benefit to the celebrity and therefore there should be no problem, then stop and “think again.”
Moreover, even if you attempt to disguise the image of the personality, for example by making her look like a robot, having someone impersonate her voice, or merely suggesting the celebrity by incorporating props or trademark phrases associated with the celebrity, such will not prevent them from claiming their right of publicity. Vanna White (her persona),, Bette Midler (her voice),, Woody Allen (his mannerisms) and Johnny Carson, (his catchy phrase), all successfully sued others for trying to get around the fact that they lacked the personality’s consent.
5. When you incorporate a copyright notice naming your client as the copyright holder, what does that mean? Your client may think they own all of the copyright in the content appearing in the work, but in fact they only own rights to the content they contributed. This incorrect conclusion on the part of your client could have serious consequences. For example, they may believe that they can reuse the photographs that appear on their website in other marketing materials. However, when the website was built, the pictures that were incorporated probably came by way of a license which specified such things as: frequency of use, size, placement and, length of time of use.
As these examples illustrate, there are many situations in which IP issues can affect your work product. In order to avoid their having a negative effect, you may wish to develop some 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 yourself that you are getting all of the control of the IP that you need and that you are not overstating what you can provide. In the event a special case presents itself, have counsel review the agreement to be sure you are not unnecessarily exposing yourself to liabilities. Follow up to be sure that all contractors and employees have signed agreements which make it clear who owns the resulting intellectual property. Review all licensing agreements you have entered into which concerns IP so you are clear as to what uses you can make of the content.
By having a clear awareness of where IP issues may appear, you are more than halfway to making the correct choice. However, if relevant staff members do not have the same appreciation as you, then unexpected problems might arise. To avoid such a scenario, 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” is still relevant.
Barbara I. Berschler, Esq., is with the firm Press, Potter & Dozier, LLC. For more information, www.berschlerlaw.com or 301-913-5200.