DESIGN AGENCY? How to Achieve IP Harmony at Work

Here’s an article I did for the Design Business Association about the top ten issues for creative agencies. A bit of summer fun….!

 Almost every day a client gets in touch to ask how to protect their work at each stage of the design process and what rights they should give to their clients. The answer is of course, don’t give anything away, but I often have to modify that when I am told what has already been conceded. It’s a difficult balance to achieve, keeping your customer happy by meeting their demands, whilst ensuring you don’t forfeit your creative endeavours.  

So, here’s a Top Ten version[1] of tips for agency IP issues, (queue wavy line fade out  a TV screen and fade in to an 80’s IP TOTP)

 In at Number 10 – “Take on Me

What IP is in your pitch and how do you protect it? Generally speaking the written words and the artwork in your pitch will be protected by copyright; the words as a literary work and the drawings as artwork. So declare this on your pitch by using © <date> <company name> on the work. Also consider using a Creative Barcode (www.creativebarcode) to declare your copyright in the work. Images from external sources should be credited, unless they are provided under an unrestricted Creative Commons license. State in your pitch that all IP belongs to and is retained by the agency and the hard copy belongs to you. If a client keeps your hard copy fine, but if they don’t hire you, get it back; it is shameful how many clients hand over one agencies work to another and say ‘I want something like this’!

Back in again at Number 9, “Feels Like Heaven” 

Success the client wants you! If you use sub-contractors make sure all their work is assigned to your agency under your terms with them. If you need software or plan to white label your own for any part of the work (or re-skin a website), make sure your licenses are up to date and you can use and assign the parts you need. 

Always in here somewhere, at number 8 it’s  “Alphabet Street

Time for contracts. Has the client provided its standard terms? Do you want to accept them? Make arrangements clear at the outset and manage your clients expectation! Consider what you are prepared to assign in terms of creative output; all artwork? all copy? You do not have to give any rights away but if you do, you won’t be able to use those materials again for another client in the future even if the current client never uses them. If the client wants all the IP and says it always requires this, ask “why?” Start from the position that your lawyer has advised against this; you can always retreat from that  (and blame your lawyer!) if the client insists. Finally don’t let the terms slide on the basis the relationship with the client is good. Get them written and signed before you start work, that way you stand a good chance of being paid whatever happens down the line.

 At number 7, climbing again this week,  “Walking on Sunshine

So the project has started, as you delivering to the milestones in the Contract? If so, are you invoicing according to these? 

Number 6 this week is “Careless Whisper” 

By now you will probably be using client IP; its trade marks or copy, make sure it has given you permission for this and an indemnity in case it turns out it doesn’t own rights in those works! Ensure all materials you provide are marked © and ‘confidential’ and only circulate them to the project team. Be careful too in case your client starts to wonder if that great designer who is working on the brief wouldn’t be better off working in house at the client and make sure your terms provide against non-solicitation of key staff.

Dropping to number 5, “A Good Heart” 

The customer might always be right, but the client always wants more. To keep them onside you might decide to go ahead and do it out of the goodness of your heart, and to maintain the relationship. Beware. If there is any project slippage get this back on track or warn the client and negotiate more time to deliver and agree this variation in writing if there is project creep, likewise to ensure you get paid for it.

Got that sinking feeling? In at number 4, “Blue Monday” 

So the client isn’t happy and things aren’t going to plan. What do you do? First look at the Design Brief and the Project Spec and talk it over with your client. Has it changed? Have timings slipped? Is it time to issue a change control notice? Try to find a workable solution and again, put it down in writing (email will do) so that everyone knows where they stand.

A faller at Number 3, it’s “Broken Wings

Don’t let matters drift and do run the problem by your lawyer. We are there to find solutions not just sort out problems.  We deal with lots of different clients and so have experience of industry expectations, how others do business and how matters can be resolved amicably.

This will never leave the top ten, at number 2 it’s “Gold

Are you ready to deliver the final project materials? Hopefully your terms set out how you will do this and that payment will be made immediately before or after delivery. If your terms provide that you will assign intellectual property on completion of the project, make sure they provide you will assign on receipt of payment.

Got there, at number 1 it’s  “Everybody Wants to Rule the World

IP is a valuable asset, develop and nurture it and don’t give it away freely.  Your customers should understand this and all but the biggest of them will agree to take a limited assignment of specific rights and a license of others.

So that’s this week’s Top Ten – I say “this week’s” because things change and what seemed like a really important consideration becomes less so as technology and practice move on and it pays to remember this and periodically review how you do things. 

DISCLAIMER

The above songs in no way represent the musical taste of the writer and may or may not be found on my iPod!!

 

 

 

 


[1] Was the “Top Ten” the ultimate missed trade mark opportunity for the BBC? Email me what you think!

Bollywood Reaction to Indian Copyright (Amendment) Bill, 2012

The new Indian Copyright (Amendment) Bill, 2012 was passed last week by the Indian parliament amid its drive to solve some of the copyright issues that dog the media and entertainment industry in India. 

Broadly the Bill strengthens copyright protection across traditional and digital media and the internet and introduces royalty payments through statutory licensing rather like the PRS/MCPS. One issue that the bill has sought to address with is protection of the rights of authors of literary works like lyrics or scripts and musical works and to grant them an equal right in the royalties earned from exploiting these works by granting powers to the Copyright Board to set interim tariffs although it is not clear how this will work. The bill also bans cover versions of copyright work for five years from the date of first recording giving an almost ‘first to market’ advantage for the original creation, but arguably preventing re-use of the work and closing down certain revenue streams.

Whilst politicians herald the bill as championing artisans, at the other end of the spectrum film and producers such as Ken Ghosh believe it to be unfair. Ghosh tweeted: “All who are part of creative process should benefit from the Copyright Amendment (Bill), which is sadly not so. Film directors, writers, choreographers and art directors don’t get any benefits from this amendment to Copyright Act.” Others in the industry claim that the issue of piracy has been almost completely overlooked.

Gowree Gokhale of leading lndian law firm Nishith Desai commented “The Amendments were much awaited and now that they are almost a reality, it will be interesting to see how the industry will deal with the impact of the changes. While this may be the genie’s lamp gifted to the lyricists, music composers, artists and the likes, it may prove to be a pandora’s box to the producers with the legal and business paradoxes that it is likely to create.”

Gowree offers insight into the practical aspects of structuring arrangements between the creative individuals;  The agreements will have to be carefully drafted to allocate the price for various rights so that the exact amount to be shared with the composers, script/screenplay writers lyricists and performers can be allocated at the first instance.” Despite this, even top lawyers at Nishith Desai concede that it is not clear at present how the commercial arrangements would work.  Ms Gokhale goes on, “It appears that copyright societies will have to play a more pro-active role by first providing a detailed tariff card for all types of exploitation and secondly by collecting and enforcing the underlying rights. The Amendments have certainly given room for using creative lawyering skills to develop and structure innovative business models to help the industry effectively deal with the changes.”

I will watch this new law with interest. For advice on Media Law, media funding and technology or branding please contact Justin Stephenson on cjs@jgrlaw.co.uk or Joanne Frears on jef@jgrlaw.co.uk. For expert advice in connection with the Indian film industry, we are very pleased to refer work to Gowree Gokhale at Gowree@ nishithdesai.com

Chopper Designer Alan Oakley Dies

I seem to be writing a lot of Obits lately; it’s perhaps a sign that I am getting on when some of the designers of iconic products from my childhood are shuffling off this mortal coil and through the pearly gates , probably considering a remodel of them, safe in the knowledge that the celestial budget will cover it.

Alan Oakley designed the original Raleigh Chopper in 1967, apparently whilst on an airplane back from the States. It might have been a n American dragster or perhaps a Harley Hog that influenced him, but the Chopper quickly became the bike every boy – and girl – from 8 to 18 wanted. It didn’t look like your dad’s bike, you didn’t need to roll up your trouser leg or put on bicycle clips; it didn’t look like your big brother’s racer or your sisters shopper – it was made for one thing only – making you look cooler than the Fonz. Sure, the ape-hanger handle bars and the asymmetrical wheels could tip you up if your balance was off and you’d career into the frame-mounted gear changer if your braking was even a little hesitant but  add a clicker to the tyre spokes (and not streamers to the handlebars) and it may as well have been a TR7!

Oakley turned around the fortunes of Raleigh in Nottingham but allegedly received no additional pay for his design. Employer’s ownership of copyright and inventions in is a fairly standard term in employment contracts. If you need advice on protecting and exploiting your designs or how to deal with employees’ inventions, contact Joanne Frears on jef@jgrlaw.co.uk 

SPIRIT OF SUMMER – A SHOWCASE FOR GREAT BRITISH DESIGN

Last week a very nice client invited me to the Spirit of Summer Fair at Olympia where they were exhibiting. We went along to show our support and to talk to about the need to ensure your brand is properly protected.

Olympia was awash with great British designers showcasing inspiring and creative fashion and interior designs and products and artisan food producers demonstrating that local food revival continues despite the economic downturn.

We spoke to many exhibitors about trade marks and design rights and heard too many stories of their designs being copied and their creative output being ripped off. Whilst it is impossible to protect an idea, once an original idea is reduced to writing, drawing or CAD it is protected by copyright. You don’t have to register your copyright, merely tell the world that you consider your work to be protected by marking it with the universal copyright symbol ©.

In the crowded marketplace of lifestyle brands, the best way to protect your business identity is to register it as a trade mark. It is a relatively cheap and simple process and at the end of the registration you have a monopoly right to use the name and prevent others from doing so. What’s more, it’s an intangible asset to place on your balance sheet which can be particularly interesting to investors and potential buyers.

For help and advice on brand protection, Trade Mark and Design Registration contact Joanne Frears at jef@jgrlaw.co.uk

Keep it Copyright!

There are over 11,000 design consultancies in the UK, half of which work in digital and multi-media design. It is acknowledged by Government that “creative industries are a vital part of the UK’s economy” generating “around 6.4% of GDP and employing 1.9 million people” and that the collective fee incomes and budgets of UK design businesses alone “amounts to £16bn” the UK’s creative industries form a greater proportion of its GDP than any other nation!

One might expect that such a contribution would result in pressure being exerted by the industry to ensure its output is protected by copyright, but perhaps because of the competitive nature of design and marketing agencies and consultancies, this appears not to be the case.

What is more, despite acknowledgement across Europe of design as an economic and creative force, on the whole EU legislation has not kept pace with working practices and technological innovation in the creative industries. Legislation lags behind in recognising the modern design process in all its iterations and designers can often find that materials they have created may not satisfy the legal requirements for copyright because traditional legal concepts of ‘originality’ and ‘authorship’ do not sit comfortably with their working methods and technology used.

The World Intellectual Property Organisation (WIPO) has recently acknowledged that the balance that once existed between rights holders and those seeking to use copyright works has tipped too far away from creators due to the development of new technologies and the ever-increasing worldwide use of the internet. Until new legislation is proposed which addresses concerns about the lack of clarity in protection of CAD and computer-generated materials and broadens the availability of protection for such works if you are in doubt, take legal advice about how to protect your work and keep it copyright!

For advice on copyright law contact me here or on jef@jgrlaw.co.uk

UK Confidential?

For months the British media has been mired in the phone hacking scandal and today I’ve been thinking about some legal issues it has raised.The first is whether voicemail messages and text are ‘confidential information’ under the Law and the second, wider issue is about whether such CI should be covered by a specific right to privacy under English Law.

As lawyers we are used to the concept of confidential information being a type of intellectual property. CI usually appears as defined term in business contracts and non-disclosure agreements. The definition of it is always more or less the same to cover secret business information, IP, sales & marketing information and business processes but it might occasionally be tweeked by the lawyer drafting it if they know the client has something particular in mind . The question is though, with so much data being created, stored and made freely available by private publication on social media, blogs and even Wikipedia, how do we determine what is “confidential information” and a legally protected form of Intellectual Property and what is personal information and thus not IP? Should we not even try to distinguish the two?

In the recent English Court case of ((i) Coogan and (ii) Phillips v News Group Newspapers and Mulcaire, Coogan and Phillips claimed that their hacked voicemails were confidential information. The Judge decided that the voicemails probably were a type of intellectual property and they probably contained commercial or confidential information. Good, that’s clear then! This leaves the vexed question of whether the content of a voicemail has a bearing on whether the message is CI or not? It seems logical that it should. If the message relates to business or commerce then it probably is CI, right? But what if the message contains personal rather than business information? In the datacentric world of social media, personal data is a commodity and why shouldn’t it also be protected as valuable confidential intangible/intellectual property?

We might cross the line here into arguments for a right to privacy. Under English Law no such right exists. Recent cases such as Douglas v Hello! have conceded that there is a civil right (or tort) against ‘breach of confidence’ and have permitted claims for ‘misuse of private information’ arising from the premise that personal information can also be CI, but these torts have been strained to fit a judgement that seems ‘proper’ where no other law would adequately assist.

In light of the clear failure of Press self-regulation and the exponential growth of data in a myriad of forms, perhaps it’s time we stopped thinking of CI as commercially focused and consider all information as confidential unless it is marked otherwise. CI could come with a ‘Creative Commons’ style license indicating the person or business to whom it relates agrees to share the information and a firm presumption that where there is no license, the information must remain secret and undisclosed. Could this type of ‘self-regulation’ by oneself work and would the Law recognise it?

RIGHTS IN THE CLOUD

Did Santa leave an iPhone 4S in your Christmas stocking or an iPad under the tree for you? Did you spend Boxing Day registering with MobileMe and iCloud? I did and whilst waiting for my devices to be registered and inventing ‘strong’ and memorable passwords, I began to wonder about who owns the cloud and legally speaking, who owns and is responsible for the content it contains?

As I looked into this, the answer became more complicated, but using iCloud and iTunes as examples I’ll try to explain.

Apple owns ‘the cloud’ and by this I mean the technology that uploads, streams and pushes the content to you. Apple also owns the physical hardware that runs the cloud ‘service’ and though I’m not sure, I’d like to think that somewhere deep underground in Cupertino there’s a cavernous hall racked with spotless white Macs gently humming with billions of iTunes tracks. Although Apple is responsible for storing your content, be warned that it accepts no liability for loss of it and its Ts & Cs remind you that you are responsible for backing up and managing your own content. In this respect, other companies who offer forms of cloud computing ranging from data storage to business services probably own their own ‘clouds’ too, and provide that the content remains your property and your responsibility.

As a business user, beware of the terms relating to transfer of data from one cloud service provider to another. Some less scrupulous providers may try to retain your business by claiming ownership of the information you store, jeopardising your data if you should try to move to a different cloud source. On a related point, it is worth checking the terms and conditions before you upload content, in case the cloud space actually belongs to a third party that you ultimately have no contractual connection with.

Back to iTunes: The music, film or programme you download to your device comprises a complex arrangement of artists, producers, record, film or TV company rights so of course you never ‘own’ it, rather you buy a license to use it indefinitely across a range of devices. There are certain restrictions in your license which are intended to provide reasonable useage under the Law whilst guarding against exploitation.  When you then upload your music to the iCloud or it is pushed back to your device, there is no change in ownership of it or in the terms of your license to use it.

Having grappled with cloud content ownership, I have two points of caution for the business users of cloud services: First, with any remote service, the supplier puts the responsibility to back up content firmly on you and disclaims most liability for loss of information you upload or stream back, so check your time machine and make space in your time capsule! Secondly, in respect of MobileMe in particular, the Ts&Cs grants Apple a worldwide, non-exclusive, royalty free license to use content for certain purposes, so if it’s private or commercially sensitive consider another means of sharing it and if it’s your copyright work be sure to state this clearly and indelibly.

As you can imagine, with thorny rights issues like this to ponder, the winter nights just fly by for intellectual property lawyers. Now, if I could just remember my passwords…

For intellectual property advice contact jef@jgrlaw.co.uk

Jan 2012