Freelancers’ Questions: Is a client allowed to trademark my artwork?

Freelancer’s Question: A corporation has just trade marked a logo I have designed for them as a sub-brand. I had no idea they were going to do this; we have not discussed ownership and I haven't even invoiced them for the work.

Due to the size of the legal team within the business, a challenge looks daunting. But I feel they have acted unfairly to me as a freelancer. More importantly, I believe the artwork belongs to me, even once they have paid for it unless they want to buy out my rights. Would a legal expert agree?

Expert’s Answer: There are two types of intellectual property at play here: (1) trade marks; and (2) copyright.

As the author of the logo you are the owner of the copyright (as an artistic work) in the logo. Any transfer i.e. assignment of the copyright must be in writing. I am presuming (on the basis that it is unlikely that you would be asking this question if there was such an agreement) that there is no such written assignment and therefore the copyright remains vested in you.

Under s5 (4) (b) of the Trade Marks Act 1994 as the owner of the copyright, you can oppose the corporation’s trade mark application on the basis that you own the copyright in the logo and that therefore they should not be allowed to have registered the mark.

On the basis of what is stated in the question (and in the absence of a written agreement) then such an opposition would appear certain to be accepted by the Intellectual Property Office. Of course, practically speaking, it is likely that the author would simply file the opposition and use this as a bargaining tool in order to extract a larger payment out of the corporation.

The expert was Ben Evans, of the e-commerce and intellectual property team at Lawdit Solicitors.

 

6th September 2011

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