Intellectual Property: what freelancers need to know (Part 2)
Having looked at your IP and copyrights risks and how to fight them in in Part One of this Intellectual Property guide exclusively for FreelanceUK, it’s now time to explore trade marks, design rights and the oft-asked question by self-employed freelancers about who owns the IP, writes Charlotte Gerrish, founding partner at Gerrish Legal.
A trade mark is a powerful tool. Trade marks not only protect logos – they can also protect words and images, shape and colour marks, and even sounds and holograms!
Through these different categories of trade marks, you are able to differentiate yourselves from your competitors and to distinguish your products and services from others in the market. In some territories, you can obtain trade mark protection even if it is not registered, as long as you use it in the course of trade.
However, it is usually better to register your trade marks to ensure that you are fully protected. For example, in the UK, if a trademark is not registered a brand-owner would need to rely on the common law of ‘passing off’ for any infringements which can be time-consuming and expensive.
To register a trademark an application must be filed either nationally (for example, in the UK) or even on a Europe-wide basis (for example, if you make an application for a European Trade Mark to the EUIPO), and the rights cannot be the same as or similar to rights already granted. The period of protection varies and can be renewed indefinitely by paying the required fees – so you actually have the potential to benefit from a very strong right, potentially forever – which protects your image and reputation on the market.
Design rights exist under national and EU laws. A design right can protect the appearance of the whole or a part of a product resulting from the features of the product itself, for example, the lines, contours, colours, shape, texture and/or materials of the product. While the right does not require registration, like copyright, a design right cannot arise unless the design has been recorded in a design document (although in practice, this can be any record of the design such as a drawing or data stored in a computer). Like a trade mark, it is also possible to register design on a national or EU-level, and we would recommend doing so to maximise protection.
Who owns the IP?
Generally, if IP is created for a business by its employees this will generally still belong to the business. However, if IP is created by an independent consultant, freelancer or contractor, the IP will belong to them unless there is an agreement setting out the ownership of the IP. For example, the owner of a design right will generally be its designer and similarly, in the case of a computer-generated design, it will be the person who controlled the creation of the design. This means that even if a description of a design is given for its creation by someone else, the design right will be owned by the person creating the design unless they are considered to be an employee. So if you’re reading this and you have staff, it is important for your outfit to have policies in place dealing with the generation, licensing in and licensing out of IP.
It is therefore, as always, imperative to ensure that there are appropriate contracts in place dealing with IP rights to make sure it is clear who the owner of your works will be. Getting the ownership of IP agreed, in writing, from the outset can be tremendously beneficial and head off potential complications – and costs – later down the line.
But contracts are also key for monetising your creations. We’ll examine this and more in Part Three, due to be published on FreelanceUK shortly.
Editor’s Note: This is Part 2 of a three-part guide on intellectual property for freelancers and the self-employed, authored by solicitor Charlotte Gerrish, founding partner at Gerrish Legal.
16th May 2019