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!

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

PASS THE CLICKER INVENTOR PASSES AWAY

Despite what Tommy Lee Jones may have us believe in MIB, the remote control was not alien technology and the inventor of it, EUGENE POLLEY died yesterday aged 96.

Polley invented the first wireless TV remote control in 1955/56 for Zenith which used light emission to change the channel by activating a photo-cell at the corner of eth TV screen. Despite the insightful genius that inspired him to create the device, it was rather uninspiringly called the ‘Flash-Matic’ and by today’s standards it’s size and shape could easily be mistaken for a hairdryer, although some might argue it would be easier to find the remote if it still looked like that!

The remote control was initially a luxury device, but now it seems hard to imagine daily life without the ability to change channels and interact wirelessly with a multitude of devices. Having worked in radar detection at the US Dept of Defence during WWII Polley was well placed to take these insights into his civilian engineering career and put them to commercial use. Polley earned 18 US Patents for his inventions which included the video disc (a short-lived predecessor to the DVD) and push-button radio (removing the need to ‘tune’ your radio by turing a dial). Polley’s contribution to the entertainment industry was recognised when he received an Emmy in 1997.

We reward genius and insight such as Polley by granting the inventor a patent – a method of anniouncing the nature of an invention to the world whilst securing a monopoly right right to use it to the inventor and secures an income stream and return on creative investment. Trade Marks are another form of registered intellectual property which grant a monopoly right, as are the much underused Registered Design Rights.

 

To find out more about how to protect your inventions, brand and design 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