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CreaTechTalk is a forum for tech, creative and digital businesses to learn and share anything relevant to them. If it’s of interest to you, it’s of interest to us!
At our event in Bristol’s Engine Shed, we were joined by businesses as diverse as modelmakers, publishers, graphic design businesses and photo agencies through to media consultancies for our first roundtable on intellectual property co-hosted with Milsted Langdon and Core Growth.
Our first CreaTechTalk
We kicked off the discussion with headline points on what is intellectual property (IP) and how important and valuable the unregistered rights such as copyright are. We only need to think of the Beatles back catalogue or JK Rowling’s Harry Potter series, to remind us of that. Of course, registered rights (patents, registered designs, trade marks) are also critical, but often early-stage businesses and scale-ups need to keep their unregistered rights forefront of their mind, as they may not have the funds to protect through registration. IP is also incredibly important to investors because IP creates natural barriers to entry and so is an automatic unique selling point for the business concerned. Businesses should consider what they own and how they’ve protected it, including their route to market contracts, so that they can demonstrate value and sustainability to investors.
The roundtable then moved on to questions from the room focusing on how IP comes into a business’ everyday projects, and any difficult issues that businesses have encountered.
Who owns an unchosen name?
Bob Mytton of Mytton Williams commented that as a brand design agency, they often get involved in naming projects. This involves presenting a range of names to customers; and so one of the issues is, who owns the unchosen names? Jack Owen, Creative Director of Ice House Design, a brand design company, suggested that during the creative process and from one project to another bleeding occurs both in design and naming. As a matter of integrity and ethics, the brand agency would not wish to repurpose the “unchosen” identity. However, the question remains that if the brands are quite separate and different, the hard work and thought that has gone into that naming process, could be usefully re-utilised for another customer. This in turn builds value and sustainability for the design company. How can this be mechanised? The design agency needs to ensure its contracts (its terms of business) cover this eventuality.
Gillian Marles of Marles and Barclay noted that her design agency had recently developed a very popular infographic which has been widely publicised on social media and they had realised that they needed to move fast on considering IP protection. They are currently looking at protection through registered designs.
The question of the first to trade mark came up as Mytton Williams commented that they were aware of a situation where a Chinese company had “got in there first” and registered a business’ trade mark in China. The result is that this is impeding the business using that name in China and the business will have to devise a new name. From a legal standpoint, although there might be protection in the UK against such acts, not all countries are the same, China being a case in point.
There is no substitute for businesses registering their brands as registered trade marks in all countries they trade in, or plan to trade in. However, a balanced costs approach needs to be taken, in that only the largest businesses can afford to trade mark all their brands throughout the world. Businesses need to get their trade mark registrations in quick, so that they are not caught out.
Background IP vs project IP
Richard Godfrey of Rocketmakers drew the line between background IP and project IP. Background IP would be everything that each business brought to the table and would be pre-existing to the project. From the legal angle, this construct is common in collaboration and development agreements, and a useful tool; however, the devil is often in the detail! Richard made the point that they might sometimes contribute back-end tools to a client’s project, and perhaps this isn’t really project IP; after all, the client is unlikely to have much interest in owning the IP in it. Again, what is key is having the delineation set out in the contract.
To what extent does a freelancer (as opposed to an employee) own the IP?
Publisher Bitmap Books, in pursuing the theme of IP ownership, queried to what extent does a freelancer (as opposed to an employee) own the IP?
The starting position is that freelancers do own their IP, as they are the IP creator. However, if a customer has paid for the output, the customer will own some (licensed) rights. There is no automatic clear-cut legal position, and the automatic position is somewhat messy. If the IP creator wants to be sure that it has continued rights of re-use, or indeed if it wishes to retain the back-end software or ancillary IP, the legal solution must be enshrined in a contract. Businesses and freelancers can’t rely on the automatic legal position, as that is going to be less than perfect.
Similarly, Mike Harvey from Amalgam Modelmaking suggested that if they were working on a generic 3D prototype, they would own the IP in the generic form, as this is what makes their company – it is their expertise, and their know-how. However specific client outputs are likely to be owned by the client.
Division of IP ownership
Paul Appleby of VID put forward that the division of IP ownership is a common conundrum in the TV industry. TV Commissioners generally own the rights in all output, whether or not the output is then featured. However, should the commissioners own the sequences that they don’t use? Should rights in these sequences be retained by the production company? Paul observed that understandably the TV commissioners wish to protect their exclusivity, so if the sequences are a never before seen natural history sequence, the commissioner doesn’t want the outtakes being used for someone else, in particular a competitor.
The way this could best be done is with a time limited non-compete clause – thus keeping the outtakes IP with the production company, but giving the TV Commissioner the exclusivity and value it needs.
Tim Harris of the Nature Picture Library remarked that they have encountered tricky ownership issues, where collaborator photographers have then gone their different ways. The question was, who owns the copyright in each photo? With joint ownership and joint creation, this is far from straightforward. With photos, one can have someone taking the shot and someone setting up the shot. Both can have important creative input and thus automatic joint ownership can come about, which is not easy to disentangle in law.
The forum cantered onto patenting. Richard Godfrey of Rocketmakers raised the ability and finances to defend having a patent. Vicki Lamch of Pyramis Solutions commented that she knows of many early-stage businesses that can just not afford patenting. This is of course true; patenting is the most expensive route for IP protection but that ignores the fact that patenting grants full exclusivity in the territories granted (and not just, say, a right to prevent copying, as with copyright) and might be the only method of IP protection, depending upon what the product/process is.
- Businesses undertaking work for customers should have carefully worded contracts delineating IP ownership as well as other key matters. Sustainability for the supplying company is key.
- Businesses should think about their suppliers and their freelancers. Who is to own the IP? Who needs it? Again, contracts are needed.
- Sometimes there is a different way. Businesses should consider non-compete clauses to carve out some exclusivity. Care needs to be taken to ensure competition law compliance.
- Trade marks must be registered to give a business appropriate protection, particularly because in some jurisdictions, other legal systems may not recognise the original trade mark owner.
If you would like more information on CreaTechTalk or any of the topics covered, or would be interested in attending a future event, please contact Jessica Bent using the details below.
This article is for general information purposes only and does not constitute legal or professional advice. It should not be used as a substitute for legal advice relating to your particular circumstances. Please note that the law may have changed since the date of this article.