An issue that comes up often in the life of an IP attorney is
this: who owns the rights to materials created by an advertising or
design agency for a client?
Materials such as written works and artistic works are protected
by copyright law, and this protection comes into existence
automatically (in other words without registration) as soon as the
material is created. The normal rule is that the person who
creates the material owns the copyright. If, however, the material
has been created commercially and on the instructions of another
person - as a result of a commission or brief - the copyright
belongs to the person who commissioned the material. But this rule
only applies in the case of certain things like photos and films.
It does not apply in the case of an artistic work like a logo. In
the case of a logo, the copyright belongs to the creator, in this
case the agency.
So let's be clear: if you brief an agency to create a
logo, you don't own the copyright, the agency does. Even
where you've paid the agency's fee! The way around this is
simple enough – you have a written agreement that provides
that the copyright is assigned (transferred) once the fee is paid.
But companies often forget to do this.
The company that owns the famous Doc Martens brand forgot to do
this when it instructed and paid an agency to create a logo for
that brand many years ago. When the brand became big the agency
suddenly decided that it owned the copyright. The matter went to
court in the UK and the judge held that - although the copyright
did belong to the agency - the English law concept of equity
required him to find that it must've been an implied term of
the agreement that the company could use the logo freely. Whew!
It's not clear whether a South African court would find the
same way. And in a recent case that came before the EU trade
mark authority the implied licence argument was rejected –
the authority held that the agency that had created a logo for a
client owned the copyright and was able to cancel trade mark
registrations that the client had obtained. Serious
The case is a wake-up call – you need to make sure that
you have a written agreement with your agency, and you need to make
sure that the agreement states that copyright passes on payment of
the fee. Easy peasy!
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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