A Case that Takes the Cake

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The Canadian Trademark Opposition Board recently denied an application for a design trademark because the applicant didn’t own the copyright in the design. The opposition was launched by the person who created the design.

It is a fundamental principle that the ownership of intellectual property – including artwork, photographs, computer code, product manuals, and advertising copy – stays with the author. If an employee creates it as part of their work, the employer owns it. But if it is created by an independent contractor, that person retains ownership unless there is a written assignment.

It is surprising how often this problem arises. It is an easy thing to get right if you deal with it at the time. If you contract with another party to create something, get a written assignment and moral rights waiver at the time. The same applies if you want to use something that already exists.

Not owning (or at the very least having a clear license to use) IP that is important to your business can cause huge problems. It can impede financing, sale of the business, the sale of products, or in this case your branding. And you may face legal action by the author.

It is possible to document this after the fact. But that assumes the person wants to co-operate, they can be found, and they don’t sense desperation and ask a big price to do it.

Paying a bit of attention to this at the outset can save huge amounts of grief and money later.


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David Canton