Freelancers need to know the basics of trade mark law to protect their own - and their clients’ - intellectual property (IP).
A common cause for dispute and uncertainty is the ownership of intellectual property rights in websites, designs, logos or graphics which are created by freelance or third party designers. This uncertainty can be removed and disputes avoided by documenting the terms on which materials are designed and created.
As a general rule if you’re producing content as a freelancer, being paid by an individual or organisation, most likely the content will belong to your client on completion, but if you are producing content of your own it is yours.
When a freelance takes on project work, ensure that a signed agreement is in place outlining the scope of the work, which includes a clause making clear the final ownership of all copyright and intellectual property rights.
Outlined below is a short explanation of IP rights and how these can be granted to others:
Retaining All Rights
The author of the material retains all rights unless expressly given / sold to someone else.
It is possible, for instance, to grant a ‘one time’ rights. Any further use or desired distribution
can then be further negotiated.
‘Exclusive’ means no one else may hold those rights to the
intellectual property. A
freelancer may be able to negotiate a higher fee for selling the IP rights
exclusively. Exclusive agreements
must be in writing.
‘Non-exclusive’ means someone else might hold the same rights and you have a ‘privilege’ or licence to use the property non-exclusively.
The freelancer is able to charge a licence fee for the non-exclusive use. Be careful of the language used when granting a licence, as certain terms, for instance, ‘sell’, ‘transfer’ or ‘assign’ are synonymous with ‘rights’ under a contract and should not be used in a licence.
This does not need a written agreement for it to be effective but we would recommend one to protect all sides, particularly as you don’t want to be confronted with an exclusive rights issue if the other party had wrongly assumed they had exclusive rights.
Bolstering of Non-Exclusive Copyright Licences
Since 2003 it has been possible for non-exclusive copyright licensees to take legal action to prevent or achieve compensation for infringements of copyright. This has given copyright owners more power when negotiating contracts, and means they do not have to so readily provide exclusive copyright. Instead they can offer to grant to the commissioner/non-exclusive licensee the right to take legal action against anyone who 'infringes' the commissioner's use of the original work in the market place. This grant should always be in writing and signed by the copyright owner.Mark Kingsley-Williams, Founder of Trade Mark Direct an online trade mark registration company.
Editor's Note: Further Reading -
Freelancers' Questions: How to handle unauthorised use of photos?
The freelancer's guide to intellectual property - part two
Freelancers' Questions: How to tackle copyright when hiring a freelancer?
Freelancers' Questions: Who owns the copyright, me or the client?