Who owns our rebranded company logo?

[Erik Sine]

Who owns our rebranded company logo?

October 21, 2011 6:43 pm

We recently underwent a rebranding and employed a design company to come up with a new logo, but unfortunately we fell out with the owner and I want to stop working with them. They have told me that we don’t actually own the rights to the logo they designed for us, as it remains their intellectual property. Is there anything we can do to transfer the rights without this ending up in the courts?

Ownership of the intellectual property rights in the logo will depend on the nature of rights arising in the work and the relationship between you and your designer. It is likely that the logo which has been designed will be an “artistic work” and will be protected by copyright as of its creation.

In general, copyright in a work belongs to the author of the work. However when the author is an employee and the work is created in the course of his employment, copyright vests in his employer. Copyright in the logo therefore appears to vest in the design company.

Whether it has transferred to you will depend on the agreement you had with the design company. Assignment of copyright must be in writing to be effective, so examine the terms of any agreement you made with the design company carefully.

If there is no provision for assignment of the copyright, the strict legal position is that the copyright remains with the design company. However, given the purpose of your agreement with them, such a result would be a nonsense and this has been recognised by the courts. In a previous case on very similar facts, the court held that although the designer was the legal owner of copyright, the commissioner of the logo was the beneficial owner.

As a result of this finding, an implied term was added to the contract between the parties to give it “business efficacy”. That term assigned the logo from the legal to the beneficial owner. For such a term to be implied it must go without saying that it is necessary for the contract to achieve its objective. This appears to be the case in your circumstances and should enable you to solve your dispute without recourse to the courts.

Elizabeth Dunn is a trademark assistant at Dehns, a firm of trademark and patent attorneys

[fishing nut]

Dont use the one they designed and use a differnt one or did they do all your other logos?

[Sign Lady]

I heard someone else talking about this on another site one time. The advice they were given was to change the logo just enough that they can't say it is their work, and they would be fine. For instance, if you change the colors, or change the shape just slightly, it is no longer the exact likeness they designed. Not sure how that would hold up, and never really heard anything else about it, so it must have worked??