Freelancer failing to reply after requesting IP of my Logo

Sidewinder · Post by **Sidewinder** » Sat Jul 04, 2015 7:21 pm

Hello fellow members!

I purchased my design from Freelancer from South America who had designed my logo and an instruction illustration back in 2012. I am now looking to start up a small business now as I have finally made time for it.

I had contacted the Designer initially to see if they she was still active, which she promptly did respond too! ...I responded back to catch up on the missed years and asked if she had included any documentations or confirmation that she also transferred the IP ownership of the design to myself as I wasn't able to find the messages in the conversations which I have saved n the folders

Only recently I have started to look into IP and copyright as I realised that this is essential to know as my concept is closely related to freelance designers. After my last email, she has failed to reply back. I have a payment receipt from pay pal but I don't think there is any notes stating about IP (i was quite naive back then so didn't research much into it at that time)....It could be the case she may not be familiar with such procedures?

I really do not want to change the logo and the instructions as its a very good job....I would really appreciate it if someone could help me out with this situation please?

Thanks

AndyJ · Post by **AndyJ** » Sat Jul 04, 2015 9:31 pm

Hi sidewinder,
Even though you may not have succeeded in getting your designer to assign copyright in the logo and instruction illustration to you, I think you can safely carry on using them without concern because you have an implicit licence to use them following your commission of the artwork. And unless there was anything in the previous correspondence which indicated that either you or the designer intended the licence to have a specific duration, I think it can be safely assumed that you may use the logo etc for as long as you wish.
While it is obviously better to own the IP in such things, the only time when you might run up against a problem is if you wanted to sell the business along with the logo etc, as the situation regarding a new owner of the business rights to continue using them would be much less clear.
However now that you have raised the matter again with the designer and she appears to be unwilling to engage with you, if she does nothing more about her 'rights' a court could be persuaded that she has effectively abandoned them. The legal term for this is estoppel by acquiescence. The longer she does nothing about this the stronger your position becomes. Hang on to any paperwork you have about commissioning the artwork and all subsequent correspondence, in case there is ever a need to rebut a future claim - although I think that is unlikely to occur.

Sidewinder · Post by **Sidewinder** » Sat Jul 04, 2015 9:58 pm

Thank you for the clarification Andy, What you said sounds bang on what I was assuming and I now feel much more relaxed. I didn't want to spend more time re-branding the company again and wanted to focus on different area. I'm assuming that Trademarking the brand (Logo/name) will also be ideal to do too?

AndyJ · Post by **AndyJ** » Sun Jul 05, 2015 9:29 am

Hi sidewinder.
Yes registering your logo as a trade mark is very sensible, and adds a further layer of IP protection to it, separate from copyright.

Sidewinder · Post by **Sidewinder** » Thu Jul 16, 2015 3:55 pm

Thanks again for the clear response Andy and sorry for the delay in getting back!

The designer finally got back to me and has agreed that the commission paid included all transfer of IP. Will this be sufficient enough or should I use an online facility which will enable them to upload their design and the documentations get automatically generated to show proof of ownership. I'm not sure if I can put up the link here but can send you the website I found via PM?

AndyJ · Post by **AndyJ** » Thu Jul 16, 2015 7:29 pm

Hi sidewinder,
Assuming the designer put her agreement to transferring the IP in an email, I don't think you need go to the expense of using a registration service. If it was verbal, you should ask her to just drop you a quick email to confirm the conversation.
As I mentioned before, you have an implied right to use the work you commissioned for that purpose, and now you have the designer's agreement that, effectively, she isn't going to challenge you over your use, there is little to be gained by going the extra step which does not provide cast iron proof of ownership in any case.
Just one final point. I have assumed since you didn't mention it, that the designer has not asserted her moral right to be credited as the author of the logo and illustrations. Since she is based outside the UK she is probably unfamiliar with our law on copyright, which requires an author or artist to make a specific statement about requiring a credit whenever her work appears. However if she did assert her right, and even though you now own the IP rights, you are under a duty to provide the credit unless the circumstances under which the works are used prevent this.

Sidewinder · Post by **Sidewinder** » Thu Jul 16, 2015 7:37 pm

Perfect,

Thank you for providing such efficient responses, you have helped me a lot