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I only gave my brother permission to use my logo!
Posted: Thu Feb 18, 2010 8:40 pm
Hi there! I have a bit of a mad situation goin on. three and half years ago I designed a new logo for my brother's company. I did this when he was a sole trader and ran his company very successfully. So essentially, I never asked for any form of payment, but gave him permission to use the design for his vans and letterheads etc. However, since then, my brother 'aquired' a number of partners to his company and has since resigned as a partner. This company are still using the logo that I designed, despite my brother working for another company. As I said, I gave my brother permission to use the logo but no-one else!. What do I do in order to either claim royalties as such, or can I insist that they do not have my permission any more - as my brother is no longer at the company? I was going to copyright the original image that I have on my computer - with the original creation dates in 2006. I don't necessarily want payment or money - It's the fact that I desgined the logo and now complete strangers seem to be using it left right and centre! I'd really appreciate any advice anyone can offer me!!! Thanks
Posted: Thu Feb 18, 2010 10:54 pm
This is not a straightforward case. First things first, you do not have to do anything to obtain copyright in the logo you designed; it is yours automatically. I assume that no-one, at this stage, disputes that you designed the logo.
However from here on the situation gets more complicated. To my mind the starting point would be the legal position of the company when the other partners were taken on board and also the situation when your brother left. Clearly your brother may be the key here. I'm guessing that no-one thought to specifically mention about the logo at the time. Did your brother acknowledge the fact that you had given the exploitation rights to him personally? If he didn't or it slipped his mind later when he came to leave the company, the other partners might reasonably have expected that the logo was an asset of the company (along with for instance any stock or goodwill).
The second complication is that a logo can also be a registered or unregistered trade mark. You as the designer would have no rights in respect of the trade mark, because that is definitely an asset of the business. This means that were you to successfully stop the company using your copyrighted work, you might also be prevented from doing anything with it if they can prove it is their trade mark - in other words a stalemate.
You don't say if you have already approached the new owners of the company. I suggest that you might try a polite letter explaining how the logo came into being and if possible get your brother to back up your version of events, and ask for some kind of one-off payment in exchange for you fully assigning the rights to the company. However, if you feel that this approach is likely to be rebuffed, you might wish to consult a good IP lawyer to advise you.
I have to say that I don't think you have a good case for forcing the company to pay up. The reason I say this is that there is a legal doctrine of estoppel, which simply put means that if you fail invoke a right for a significant period of time, the other party may reasonably infer that you never intended to invoke it, and thus their liability to you is negated. This would be something a court would have to decide on, based on the facts of the case. I suspect that you would not benefit financially by going to court (the legal costs will probably outweigh any award that might be made in your favour) so an amicable settlement would be the most pragmatic way ahead.