Do You Own That Intellectual Property? You May Not
If you have a business, there may come a time when you need something creative done for the business. That may be a character, a graphic design, a flier, a logo, or a saying. And yes, you could hire an outside marketing or design or public relations company to do that work for you.
But it’s a small project, and why spend the money, when you have so many employees—one of them is likely to have the creative skills you need to get the job done?
There is nothing wrong with doing that. But the problem becomes, when the employee that made that creative work or design or saying or logo for you leaves your company, who actually owns what that employee created—you, or the employee?
Who Owns That Work?
This can be a complicated question.
As a general rule, when someone is an employee, and they create something as part of their job responsibilities you, as the employer, own that intellectual property.
But that’s if they are employees. If they are contractors, the analysis can get much more difficult. Ownership of whatever was created, often boils down to minute details of how the work was created, when, and the circumstances behind the creation.
What’s a Contractor?
To see who owns the intellectual property (IP), you or the contractor. Courts will first look at how the IP was created, and whether the creator was, actually, a contractor.
Was the IP created at the contractor’s home, or at your workplace? Was it done on the contractor’s own computers or with the contractor’s own supplies, or was it done with your work supplies?
The analysis is very similar to the analysis the IRS uses to determine whether someone is a contractor, or a full employee. Courts will ask whether the person that created the IP could control their own schedule, whether the person had freedom to do what he or she wanted to do in creating the IP, whether taxes are withheld from the paycheck, or whether the person certain the IP was free to work for other people.
What If It’s a Contractor?
If it turns out that the creator was, in fact, a contractor, you may have a problem. That’s because with contractors, there must be a specific agreement that the work was created for hire—that is, that you, as the employer, own the IP.
You will need a written agreement that says that the creation is a work for hire, for you to truly have the ability to claim the IP as your own. If you don’t have one, you will need other proof that there was a specific understanding that the creation was a work for hire creation and that the intention was for you as the employer, to retain and own it.
Questions about intellectual property or about your employees? Call the West Palm Beach business litigation lawyers at Pike & Lustig today.