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 stuff!

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!

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