Intellectual property advice for an illustrator

[Cyclone 10]

Email is just as useful as physical paper, there's no distinction.

But for a formal contract I'd want something signed either with an online signing service, or on paper.

[L00b 441]

I get the issue re someone else taking the credit but if they are using the illustrations for another purpose; why does this matter if you've been paid for the work?

Try that one with a photographer for a laugh

 

The last client in that sort of pickle which I helped, was facing a claim for close to £100k (realistically, half that). The photographer had been paid for the work (photographing an event by the commissioner), but not for commercial use of the resulting photos on the commissioner's website. Statute and case law said the photographer had a strong case. Uh-oh.

When we design a product for a client, once we have been paid, the rights to the design belong to them and they are within their rights to do whatever they see fit with it.

But from the client's point of view, that is enshrined in your T&Cs, which state as much (design rights assigned to the commissioner upon completion of project and payment of all monies due in pursuance of the commission) in writing (IIRC).

 

If your T&Cs didn't state as such, FD would still own the design rights regardless (whether FD would choose to enforce them against the commissioner or not, is a question of fact and degree: FD might not, when products to the design flop...but then, maybe FD might, when products to the design end up doing a monster global Apple iPod-like hit? answers on a postcard )

 

In the above, I'm not suggesting dishonesty or greed on your part, Steve. Just taking a pragmatist, business-centric view of the situation. Serious people generally don't bother about IP, unless there's serious money at stake...and the more money at stake, the less relevance for the moral component of business decisions. Or maybe I'm too cynical (but then, in context, that's mostly borne from observing client behaviour over the years).

I have a question about paper trails. (I know nothing about the design industry)

 

Is it standard to do "paper" trails via email or would you expect and request something in the post?

Copyright must be assigned in writing.

 

Certain jurisdictions require both parties to sign the assignment, others require at least the assignor (the author/owner of the copyright selling the rights) to sign the assignment.

 

I've yet to hear or see an IP case wherein this was (i) done by email only and (ii) deemed a valid assignment (not saying it wouldn't be, but I'm unaware of any precedent in the UK...so pays your money and takes your chances )

 

My standard advice to all clients has not changed on over 10 years of practice: 'get it in writing'. Meaning, original, on letterhead, dated and signed. Anything less is just inviting (potential) problems down the line.

Edited January 26, 2017 by L00b

[sharpend 11]

 

My standard advice to all clients has not changed on over 10 years of practice: 'get it in writing'. Meaning, original, on letterhead, dated and signed. Anything less is just inviting (potential) problems down the line.

 

Thank you. I was thinking that writing may indeed be in writing but good luck in tracking down and email after a couple of weeks or even days.

[Cyclone 10]

I routinely get asked to sign commercial contracts using adobe sign (an online service).

I can't imagine any court deciding that because it was electronic it's not valid.

[sharpend 11]

I routinely get asked to sign commercial contracts using adobe sign (an online service).

I can't imagine any court deciding that because it was electronic it's not valid.

 

No, my question was one of practicalities.

 

You could give someone the codes to a nuclear submarine via email but most people would manage to lose it eventually.

[L00b 441]

Thank you. I was thinking that writing may indeed be in writing but good luck in tracking down and email after a couple of weeks or even days.

Rest assured, it frequently is no better for written documents going back many years

I routinely get asked to sign commercial contracts using adobe sign (an online service).

I can't imagine any court deciding that because it was electronic it's not valid.

I'm talking about assignment of IP rights, not an employment contract, or a commissioning contract, or <...>.

 

IP Statutes govern what minimum content should be included in assignments, moreover in dependence on the type of IP including certain formal aspects (e.g. per my earlier example, signed by both parties or just the assignor <etc.>).

 

That is, UK and foreign Statutes, if the geographical scope of the rights, and/or their assignment, extend beyond the UK jurisdiction (copyright in particular, is automatically 'international' under the Berne Convention, as are unregistered community design rights, while we still have them pre-Brexit).

 

Whereby, since I've yet to hear or see an IP case wherein rights were assigned by email only and such email(s) deemed a valid assignment by a Court, I said that you can "pays your money and takes your chances"

 

The question is one of evidentiary weight: whilst there is equal certainty between the contents of a written document and an electronic document, in absolute terms, it's always easier to prove the authenticity of a signature based on an original document (approving the said written contents), than the identity of an electronic signatory (approving the said electronic contents).

 

But then, as always, the matter would always turn on the facts of the case, and the court's appreciation of the validity of an email or other electronic record as evidence of a contract, will be influenced by the above and further evidence: 'assignment email' meeting the statutory minimas for there to be an assignment in the first place, any 'negotiation emails' preceding the 'assignment email', phone records showing exchanges between the parties in the date range preceding the 'assignment email', recordal of the assignment (with or without the 'assignment email' as supporting evidence) at IPO for registered rights, copies of financial records pertaining to transfer of the consideration, <etc.>

 

There's little straightforward about IP generally...but in relation specifically to contracts purporting to transfer ownership of IP, the most straightforward option is still the 'old school' swirling pen on paper.

 

Use alternatives at your leisure and (potential) expense: that's why they pay me the big bucks to sort out the mess afterwards

Edited January 26, 2017 by L00b