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!

DO YOU HAVE A PINTEREST IN COPYRIGHT?

 Twitterers are all a flutter with Pinterest this week and debate rages between creators and pinners about whether items pinned on Pinterest are copyright.

Two debates I’ve joined are on ‘Lateral Action’  (see http://lateralaction.com/articles/pinterest-artists/) and Rackspace (http://www.rackspace.com/blog/)

The main debate falls into three categories. The first group (largely made up of creative), see the benefit of social media forums for visual artists and welcome Pinterest broadly as a marketing tool irrespective of any infringement of creative rights. The second group is the outraged minority who view pinning with suspicion and who see every pin as a potential copyright infringement which undermines the fabric of legal protection for creative works. The third group are the pinners who just pin and don’t really seem to care either way whether the image or work is copyright, who it belongs to and whether any of this really matters.

So, does it matter whether the post is copyright and who it belong to?

From an English Copyright Law perspective any image pinned which was not taken, made or created by the person pinning could infringe the creators copyright.  That means the creator has a claim against the person pinning, and possibly against Pinterest too.

Nothing in law is ever simple though. If however you take a photo of an original work, image, installation or design and pin it, it is arguable that you have copyright in your photographic interpretation of the work and can pin it freely without worrying about the artists rights in the original.

Matters are more complicated if you pin images of branded products, where even if you created the image you might infringe trade mark law and the trade mark owners might seek removal of the image and compensation for its unauthorised use.

Pinterest is keen to point out in its Ts & Cs that it has a notify and take down policy so if you as a visual artist, creative individual or TM owners whose work appears without a credit or permission you can try to have it removed.

But again, does this actually matter?

The law is complex and it is changing through Court decisions and legislative initiatives. Copyright law in England is three hundred years old and was originally designed to create a monopoly right for the creator of a work who could dictate how it was reproduced. In the digital age, this seems quaint, but there is a valid argument that revenues from copyright exploitation encourage and fund the continuance of creative work (don’t get me started on this pet subject) and in my mind it does matter. So, the question is how should copyright be respected? The rule of thumb for posting images to Pinterest should be to check who owns the work/brand before pinning, but who does that? A better practice might be to mark work clearly, allowing the creator/brand owner the opportunity to be credited. In doing this the creators right to be recognised and remunerated is acknowledged,  marketing can be freely undertaken and the pinning public can show the world what has caught their eye and imagination like never before – which must be good for copyright and creativity in the long run. 

For advice on copyright, contact Joanne Frears jef@jgrlaw.co.uk 0207 339 7119

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 

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