Who owns your Intel­lec­tu­al Property?

In Brief

Intel­lec­tu­al Prop­er­ty (“IP”) may appear to be intan­gi­ble but it could be the most valu­able asset your busi­ness pos­sess­es. It is there­fore vital to deter­mine who actu­al­ly owns your IP.

The own­er­ship of com­pa­ny names and busi­ness names is often a sub­ject of con­fu­sion. The fact that you have reg­is­tered your com­pa­ny and busi­ness names with ASIC does not of itself give you any pro­pri­etary own­er­ship in those names. The only way you can legal­ly own com­pa­ny and busi­ness names is to reg­is­ter them as trade marks. 

Sim­i­lar­ly, although you may have been using an unreg­is­tered brand for years, anoth­er par­ty may obtain legal own­er­ship of that brand by reg­is­ter­ing it as a trade mark. It would gen­er­al­ly require court action by you to assert your pri­or rights in that brand. Even if you do reg­is­ter your brand as a trade mark, you will only own that mark for the indi­vid­ual class­es for which it is spec­i­fied, not the class­es for which you are actu­al­ly using the mark.

Trade marks need to be owned by the appro­pri­ate enti­ty. If you reg­is­ter your marks in the name of an IP hold­ing com­pa­ny which has no effec­tive con­trol over the enti­ty which is actu­al­ly using the marks, those marks can be removed from the reg­is­ter for non-use.

Own­er­ship of copy­right can be par­tic­u­lar­ly tricky because copy­right is not reg­is­tered. You there­fore need to keep accu­rate records of how and when you cre­at­ed the copy­right work. If the author of the work is your employ­ee, the copy­right in that work would gen­er­al­ly vest in your com­pa­ny. How­ev­er, if you com­mis­sion a con­trac­tor to cre­ate your adver­tis­ing, soft­ware or web­site, the copy­right in those works will gen­er­al­ly vest in the con­trac­tor. It is there­fore wise to require assign­ment of this copy­right to your com­pa­ny at the out­set, when your bar­gain­ing pow­er with the con­trac­tor is strongest.

Moral rights in copy­right, which include rights of attri­bu­tion and non-den­i­gra­tion are per­son­al to the author of the work even if that author is your employ­ee. Moral rights can­not be assigned. As a con­se­quence, they are effec­tive­ly attached to the work even though your com­pa­ny owns the copy­right in that work. It is there­fore wise to require the employed author to under­take not to assert such moral rights as a spe­cif­ic pro­vi­sion of the author’s employ­ment contract.

The own­er­ship of inven­tions and designs can be effec­tive­ly lost if their nov­el­ty is destroyed by pre­ma­ture expo­sure to the mar­ket. It is there­fore vital to have strict secre­cy pro­vi­sions in place pri­or to the fil­ing of patent and design appli­ca­tions. It is also impor­tant to ensure that inven­tions and designs are not owned by com­pa­nies which have sub­se­quent­ly become defunct.

Your unequiv­o­cal own­er­ship of your IP should be as impor­tant as your own­er­ship of your real prop­er­ty, stock or equip­ment. That own­er­ship needs to be ful­ly secured and reg­u­lar­ly monitored. 

If you’d like to know more and make sure your IP is pro­tect­ed do not hes­i­tate to get in touch via email or phone.