Intellectual Property the hard way: Part One



<div _ngcontent-c14 = "" innerhtml = "

In the series of startup tips, both need protection of intellectual property and fundamental protections, like contracts of employment and contracts have been described. However, I would like to move up a gear and start a series of lessons learned or, in some cases, horror stories about intellectual property. If you would like to contribute, please see below.

I spoke with New Orleans lawyer Andrew Legrand of Law Spera on an interesting editorial about an artist who had developed a logo for a small business about ten years ago and the company that paid for it but did not hold the rights. & nbsp; In other words, you do not necessarily get the price you pay. In our stories, there will be a theme in which customers do not know that they need to identify and protect their intellectual property or consciously decide that it is not worth spending time and money.

Shutterstock

Married: How did all this begin?

Andrew: Ten years ago, the artist received a few hundred dollars for the logo, but never gave up an assignment of his copyright. Like many small business owners, I guess those at the time did not have a lawyer and just did not know that it was a problem.

When the artist contacted us, & nbsp; ten years later, this company had about ten sites and was worth about $ 50 million. The company was also planning a rapid expansion and was working with a New York banker to secure additional funds.

Married: Oh yes, fundraising issues often underestimate intellectual property issues. What was the impact?

Andrew: As part of the due diligence process, the banker realized that the company had never received any assignment of the logo and that the logo was a key element of the identity of the company. brand of the company itself. In order to progress in financing, the banker asked the owners to individually guarantee the rights to the logo. This meant that if they bought the logo, they would do it with their personal funds, not with commercial funds.

Married: The current mistake costs the owners personally and they do not negotiate in a position of strength.

Andrew: Correct. The owners then approached the artist and made him an offer about ten times higher than the one they had actually paid for the work at his first creation. And that's when she contacted us. Over the last ten years, the relationship between the artist and the business owner had deteriorated. They could not have constructive conversations without mediators.

This led our client to request a significant increase in the amount of the compensation. Our client also stated that she created the logo for a single location business, not a regional business.

Married: Did your client, the artist, own the copyright of the logo?

Andrew: Unfortunately, she did not do it. Our client could have been even better placed if she had deposited the copyright of the logo. The lack of registration opened the door to the company, arguing that it had issued an implied license. The company also had the revenues and the means to prosecute. Our client does not have it.

Married: What was the end result?

Andrew: In the end, this small business ended up paying big fees to buy the rights to the logo, which meant so much to her and her business. Our client also benefited from it, but she would have been in a much better position if she had protected her work with copyright right from the beginning.

These two clients could have saved tens of thousands of dollars by regularly consulting a lawyer. Any good business lawyer would have spotted the problems here before they ended up in stormy discussions and helped to avoid them. Unfortunately, both parties waited for advice and they paid for it.

Well said, Andrew! Companies must ensure that intellectual property and all associated rights are transferred when they pay for the work. And creators or artists must protect their works by recording them correctly.

We are looking for lawyers or small businesses that have experienced success or failure in intellectual property and can share their lessons for the benefit of others. We will protect the identity of the people involved and will not require real customer names. Please contact on twitter @maryjuetten or email at [email protected]. #onwards.

">

In the start-up advice series, the needs for intellectual property protection (IP) and basic protection, such as employment contracts and contracts, were described. However, I would like to move up a gear and start a series of lessons learned or, in some cases, horror stories about intellectual property. If you would like to contribute, please see below.

I spoke with New Orleans Lawyer, Andrew Legrand of Spera Law, about an interesting warning involving an artist who had developed a logo for a small business about ten years ago previously and a company that had paid for it but did not hold the rights assigned. In other words, you do not necessarily get what you pay for. In our stories, there will be a theme in which customers do not know that they need to identify and protect their intellectual property or consciously decide that it is not worth spending time and money.

Married: How did all this begin?

Andrew: Ten years ago, the artist received a few hundred dollars for the logo, but never gave up an assignment of his copyright. Like many small business owners, I guess those at the time did not have a lawyer and just did not know that it was a problem.

When the artist contacted us ten years later, this company had about ten sites and was worth about $ 50 million. The company was also planning a rapid expansion and was working with a New York banker to secure additional funds.

Married: Oh yes, fundraising issues often underestimate intellectual property issues. What was the impact?

Andrew: As part of the due diligence process, the banker realized that the company had never received any assignment of the logo and that the logo was a key element of the identity of the company. brand of the company itself. In order to progress in financing, the banker asked the owners to individually guarantee the rights to the logo. This meant that if they bought the logo, they would do it with their personal funds, not with commercial funds.

Married: The current mistake costs the owners personally and they do not negotiate in a position of strength.

Andrew: Correct. The owners then approached the artist and made him an offer about ten times higher than the one they had actually paid for the work at his first creation. And that's when she contacted us. Over the last ten years, the relationship between the artist and the business owner had deteriorated. They could not have constructive conversations without mediators.

This led our client to request a significant increase in the amount of the compensation. Our client also stated that she created the logo for a single location business, not a regional business.

Married: Did your client, the artist, own the copyright of the logo?

Andrew: Unfortunately, she did not do it. Our client could have been even better placed if she had deposited the copyright of the logo. The lack of registration opened the door to the company, arguing that it had issued an implied license. The company also had the revenues and the means to prosecute. Our client does not have it.

Married: What was the end result?

Andrew: In the end, this small business ended up paying big fees to buy the rights to the logo, which meant so much to her and her business. Our client also benefited from it, but she would have been in a much better position if she had protected her work with copyright right from the beginning.

These two clients could have saved tens of thousands of dollars by regularly consulting a lawyer. Any good business lawyer would have spotted the problems here before they ended up in stormy discussions and helped to avoid them. Unfortunately, both parties waited for advice and they paid for it.

Well said, Andrew! Companies must ensure that intellectual property and all associated rights are transferred when they pay for the work. And creators or artists must protect their works by recording them correctly.

We are looking for lawyers or small businesses that have experienced success or failure in intellectual property and can share their lessons for the benefit of others. We will protect the identity of the people involved and will not require real customer names. Contact us on twitter @maryjuetten or by email at [email protected] #onwards.