Life is simple. You start a business, hire a designer or an agency to design your logo, website and other marketing assets and then you launch into your marketplace. You obviously imagine that, because you’ve paid said designer or agency for your logo or other marketing collateral, that you own that work. This is where you’re most probably wrong.
According to international Intellectual Property Law, the IP of anything that is created, belongs to the creator. This means that, even if you pay in full for the works and take possession of the files that accompany the work, you still don’t actually own the IP to the works, unless you have had the IP assigned to you by the originator as part of the contract.
By simply instructing works and paying for those works to be completed, you are actually only really paying for the use of those works. As a saleable asset of your Company, as brand equity on your P&L or as a piece of Intellectual Property, you don’t own it unless you have a sign-off.
This means very little in the reality of business, unless you want to do one of three things. If you want to sell your business as a going concern, value your marketing assets on your P&L or in some rarer cases, want to make amendments to those assets at a reasonable cost; you will have to actually own your business assets, by having the IP of those assets assigned to you or your Company.
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There are several examples of businesses hitting a bit of a snag by not having IP sign-off. These range from business sale deals stalling for lack of IP documentation when the purchaser’s solicitor askes for them to extraordinary charges being leveed to business from agencies that know their rights.
Thankfully, these types of examples are rare, but they do occur from time to time and any business could be susceptible to problems with asset IP, unless they have created the works in-house or have the vital IP assignment documents to accompany assets such as logo, brand guidelines, packaging, website and even advertising concepts.
At the beginning of the process, getting around these problems is fairly simple. When commissioning the works, specify that you want the IP of the works assigned over to you upon completion and when they have been paid for in full. Reputable and professional agencies should already have this in-hand anyway, but if they don’t its worthwhile paying a lawyer to draft an agreement and get the agency to agree to this, before commissioning the works. You might have to pay a slightly higher price for this type of service, but you can always shop around.
If you are an existing business which has already had the works done without even a mention of IP, the way forward is a little stickier and potentially a lot more costly.
To retrospectively seek IP sign-off, you’ll have to contact the designer or agency that created the works in the first place and therefore still own the IP to those works. If it’s been a little while since that work was done, this task can prove difficult, as agencies come and go, designers change brand, geography and even roles; finding the owner of the IP can be problematic.
If you can locate them, it’s possible that they will be extremely amenable. They might willingly assign IP to you when asked and sign any documentation that you have had drafted. However, in most situations, the originator will want to be paid a fee for this, as the original works didn’t include the assignment of Intellectual property. In these cases, you might have to pay the originator a fee for the assignment, which could range from a small admin charge, up to the same sort of original cost again, and even up to and beyond affordability, as essentially, they have you over a barrel and own something that you clearly want. That becomes a seller’s market.
In these cases, you have to take a view. Pay what they want and settle the matter or find a more reasonable designer or agency, that will include IP sign-off and have the assets redone differently. In many cases, it would be cheaper to re-brand and get a new website than it would be to settle a retrospective IP bill.
A final note about this element of IP… Even if you do own IP of your business assets, but they have been created by someone other than yourself, the originator will still have the right to use your assets as examples of their works, in order for them to win new business. However, if you own the IP, you have the asset. All the originator can then do in this case, is inform potential future clients that they created that work for you.
So, to recap. If you’re a start-up or an existing business having your marketing assets redone, make sure you ask for a price that includes IP assignment. If that horse has already bolted and a re-brand is out of the question, track down the originator, bite the bullet and grab ownership of your assets. If you know that at some point in the future, you will be looking to re-do your marketing assets and perhaps re-brand, wait until then and go with a reputable agency that will assign IP at an appropriate cost, as part of the commission. In all cases, make sure that key assets are owned by you or assigned to your organisation whenever they are created and paid for. This is especially vital if you have product design, packaging, branding, signage and web assets that you will need to assign a tangible value to for the purposes of asset ownership.
To end, a caveat regarding electronic assets such as websites. You can never own the IP to every part of your website, even with IP sign-off from the originator, if the website has been developed using code, formats, conventions or mechanisms, where the IP to those codes are licenced to the originator for them to utilise to create electronic works such as websites. Some of that code is open source, with IP owned by everybody. Some of that code might be intellectually owned by software companies who provide the tools to the originators, such as Adobe or Apple. This type of IP can never be owned outright by your Company.
This is exactly the same as the car that you own. You own the car, you can sell that car or even give it away, but you can’t reproduce that car, as you don’t own the IP to your car, you simply own the use of it. It’s the same with websites, you might own the content, own the rights to use it and even sell it, but you can’t use the engine (the code) to produce another website and sell it, without having the IP for the code or permission from the originator under licence.
For more about IP and business assets, ask your lawyer or contact us at Village Publishing (www.villagemags.co.uk) for a quote on your marketing assets; IP assignment included!
