Writing Off Your Rights

By Jennifer Kovalcik on November 4, 2016Posted in Brands, Copyright, Trademarks

I have twins.  Yes, we have two of most everything.  No, it doesn’t make it easier.  The twins don’t always remember who owns what or whether the object was traded. 

I hear a lot of, “That’s mine!”  Somehow, that familiar childhood fight doesn’t seem to change as we grow up, and many of my clients suffer from the same dilemma.  Two people think they have rights to the same thing.  I haven’t found a magic bullet to end my kids’ disputes, but it is an easy fix for business clients – put it in writing.

Is someone else involved?

Many times, this comes up because a client fails to get a written, complete contract signed by someone they have hired to do something for them:

·         Creator of a website, artwork, or marketing materials

·         Host of your website

·         Photographer or videographer

·         Manufacturer or supplier

·         Printer or publisher

·         Distributor or supplier

If you don’t have a contract, there is likely to be a disagreement about what each party can do – a disagreement which usually arises after the relationship has soured and neither party has an incentive to cooperate to work out a reasonable solution. 

A few legal dollars spent early in the relationship clarifies rights and roles and is far less expensive than the cost of handling a legal dispute.  You know the saying… an ounce of prevention, and all that jazz.  Think of the legal spend as insurance.  If you have a clear contract that defines usage rights and the actions each party can take, it also helps prevent a dispute about what you otherwise assumed would happen down the road.

Make sure the contract actually talks about ownership.

If you have a contract, make sure it describes more than just price. An incomplete contract is just as bad as no contract at all.  You need to specify which party owns any trademarks and copyrights that might be involved and clarify what the other party’s right to use those trademarks and copyrights entail.  You also need to address what each party can and cannot do if the relationship ends.  Too often, the contract doesn’t say anything about ownership or usage rights and is ultimately the root cause of the dispute.

Top 5 Cautionary Examples:

1.      Domains – if someone else registers a domain name for you, make sure the registration is in your name and that your contract specifies that the domain is your property. Domain names often include or become your trademark.

2.    Websites – similarly, if someone else hosts or creates website content for you, make sure your contract specifies whether you own that material and whether you can end the contract and take your site to another vendor. Technically, this really falls under copyright ownership, but the website content is usually focused on your branding and is a primary trademark branding vehicle.

3.    Photographs/Videos – just because you pay for it, doesn’t mean you own it. Actually, the person who creates it is usually the owner unless there is a contract assigning the rights to the customer.  If you want to later discuss owning the photograph or video, it is going to cost more than you probably would have paid if you clearly defined that you are purchasing ownership rights and not just a right to use the work.  Again, this really is copyright ownership, but the artwork might be used on your product labeling or other marketing materials that are crucial to your brand.

4.    Distributors – if you give anyone else permission to sell products for you, you need to clearly articulate that you are the owner of the product’s trademarks. Distributors and suppliers have separately registered trademarks and have gotten into disputes with the would-be trademark owner about who really owns the mark.  You also need to spell out whether the distributors can use your trademark as part of their own business names or whether they can have their own websites that use your trademark in their domains or web address.  These are much harder to get back after you terminate a relationship and can result in a website that uses your trademark in connection with the promotion or sale of a competing product.

5.     Manufacturers/Printers – if someone else is making products for you that have your mark on them, then your contract needs to specify that you own the mark and spell out what rights the manufacturer has to make anything that includes your mark.

The bottom line is – get out of court and get it in writing!

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