Question:
Jennifer,
I am hiring an artist to create the logo for my practice. Is there anything I should be aware of when dealing with her and protecting my ownership in the work?
Thanks,
Dr. Z.
Answer:
I've kicked this one over to Matthew Duffy, Esq., our Guru for IP -
Great question! First off, let’s discuss the difference between a trademark and a copyright. A trademark, such as a brand name, logo, or slogan, is used as a “source identifier” to distinguish your goods and services from another. For example, “Coca-Cola” for soft drinks. The benefit of registering your trademark with the United States Patent and Trademark Office (USPTO) is that it not only prevents others from using your mark without permission, but also prevents others from registering a mark that is similar to your goods or services that could confuse a consumer. On the other hand, a copyright is an original artistic, literary, or intellectually created work, such as a photograph, software codes, or a motion picture, that exists in a tangible medium. One example is the famous “Marilyn Diptych” painting by Andy Warhol. The benefit of registering your work with the U.S. Copyright Office is that it affords you, as the owner, the exclusive right to reproduce, distribute, and display the work and prevents others from copying and exploiting it without your permission. Thus, it is always advisable to federally register your work or mark. In some instances, an work can be copyrighted and trademarked.
However, one thing that you must keep in mind is that the person who created the work is the copyright owner. So if you are hiring an artist / vendor to create the design for your practice, you must obtain a “work-made-for-hire” agreement in writing which indicates that the work was commissioned by you, the employer or hiring person, and that you are the copyright owner, not the artist. Also, the “work-made-for-hire” agreement must be executed before the work is created. In 2019, the U.S. Court of Appeals, 2nd Circuit (which covers New York State) ruled that post-creation “work-made-for-hire” agreements are insufficient and do not satisfy U.S. copyright writing requirements. Without an agreement in place, you are not the owner of the work and cannot obtain federal registration or protection.
Therefore, I highly suggest that you get an agreement in writing indicating that you are the copyright owner and commissioning this as work-made-for-hire. We can gladly assist you in drafting this up as well as registering your work (and/or mark) with the appropriate government office. Now, if you have already commissioned, you will require assistance for a proper agreement transferring rights. A simple assignment will likely not pass muster if reviewed/challenged.
When to protect and what to protect can be tricky, and sometimes doesnt come up from your initiating either. You could up with a logo or name or branding material that a party who has taken the steps to protect believes conflicts with their own, which they have registered properly, which would give them legal grounds to force you to bleed money to defend against challenges, or worse, change your branding/image(s). We do recommend you assess what marks/logos/branding you are utilizing and preemptively file to avoid a later stage challenge....
For questions or for a review, email Diana to schedule with Matthew or Jennifer, and please send your practice name and brand/brand questions. Newsletter members receive free consults.
|
|
