Every April 26, WIPO (World Intellectual Property Organisation) celebrate World Intellectual Property Day to educate about the role that intellectual property rights (patents, trademarks, industrial designs, copyright) play in encouraging innovation and creativity.
So, we thought we’d get on board this year and ask Charlotte Wigham; Head of Intellectual Property at Aticus Law; to write an article on how Intellectual Property relates to Designers and their clients.
Designers & their clients: who owns the copyright?
Under English law in the absence of any express or implied term to the contrary the author, i.e. the person who created a work, for example, a designer, will usually own the copyright, or if the author is an employee, the copyright will usually belong to their employer, for example, a design agency. However, in the absence of an assignment of rights, a clear contract for services or an employment contract, the ownership of copyright, and of course the management of the revenue that can be generated in connection with it can become contentious, expensive and time-consuming.
So, when clients commission designers and design agencies to create works for them, who owns the copyright and how and when does copyright ownership pass from designer or agency to client? And what about freelancers who are not employees of the agency?
The answer is not straightforward. In order to manage expectations and avoid ambiguity leading to potentially expensive disputes it is very important, whether you are a designer, an employer or a client commissioning work, to have a clear and legally enforceable agreement in place. For instance, don’t forget that for a copyright assignment to be effective the Copyright, Designs and Patents Act 1988, s 90(3) requires any such agreement to be in writing and signed by or on behalf of the assignor.
Designers and agencies should consider having their legal representatives draft bespoke terms of business that clearly set out the agreement in relation to copyright ownership, and the circumstances in which it will not transfer to the client (e.g. for non-payment of fees).
The terms of business should also deal with the position where designers produce various optional works for the commissioner, which are then rejected by the commissioner. The designer may wish to ensure they have the option to use these for another client, provided of course that they do not contain any of the commissioner’s intellectual property rights such as their own trademarks or copyrighted works, and the terms of business should be drafted accordingly.
Aticus Law’s clients use one or a combination of our portfolio of copyright documents, which are signed by designer and client, and which give our clients full protection and provide clarity for all parties.
By Charlotte Wigham
For more information from our expert intellectual property solicitor partner contact: Charlotte Wigham; Head of Intellectual Property at Aticus Law.
