It’s second nature for TTOs to carefully guard the IP rights related to faculty inventions, but what about the vehicles you use to market those rights? If you have outsourced the creation of any marketing copy or other materials, it may require legal protection. “If you have a website that someone else created for you, or if you even have your business cards designed, there is a relatively good chance that you in fact could use the help of an IP attorney and just not realize it,” warns Kristie Prinz, founder of The Prinz Law Office in the San Francisco area. “Increasingly attorneys like me are seeing disputes arise over who has the rights to the artwork, and these disputes are turning into copyright infringement cases.” Prinz explains: “U.S. copyright law establishes that the creator of a copyrightable work owns the rights in that work when it is fixed in a tangible form of expression, unless the work at issue is a ‘work for hire.’” To make sure you own your outsourced marketing, she explains, the work must have either been prepared by an employee or been commissioned for creation under a written work for hire agreement. So if you outsource a website design or marketing piece, make sure to execute the appropriate agreement in advance, Prinz advises. And don’t forget that if you are contracting with a business, the firm may itself be jobbing the work out to a contractor. “You still may not own the rights even with the appropriate agreement in place with the business, if that business failed to have the appropriate agreement in place with its designer,” she says. Go to: Silicone Valley IP Licensing Law Blog

Posted November 11th, 2008 under Intellectual Property Marketing

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