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17 October 2016 Who owns your Intellectual Property?

By Eric Ziehlke, Partner


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.

Eric Ziehlke, Partner  |  Phone: +61 2 9233 5544  |  Email: ejz@swaab.com.au

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This article is not legal advice and the views and comments are of a general nature only. This article is not to be relied upon in substitution for detailed legal advice.

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