Many people were surprised by the recent disclosure by the Ministry of Health & Wellness (MOHW) that intellectual property related to the “Jamaica Moves” campaign is not owned by the MOHW but rather by the marketing and public-relations firm that assisted in the promotion of the campaign. Some may wonder: how an entity other than the MOHW can own the intellectual property of the campaign which is so closely associated with the MOHW? The answer lies in the nuances in intellectual property law.
There are different types of intellectual property, which include trade marks, copyright, patents and designs.
For trade marks, the registration of a trade mark under the Trade Marks Act confers a property right on the proprietor of the trade mark. An individual or entity becomes the registered proprietor of a trade mark when they lodge an application to register a trade mark at the Jamaica Intellectual Property Office (JIPO) in their name. Of course, someone may own an unregistered trade mark but the rights are much less secure.
Under the Copyrights Act, the author of a work is the first owner of any copyright. An author means the person who creates the work, specifically, for a literary or dramatic work, the author of the work, for a musical work, the composer, an artistic work, the artist, a photograph, the person taking the photograph. Where, however, a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer may be the first owner of any copyright in the work, subject to any agreement to the contrary. In circumstances where contractors such as graphic designers or a public relations consultant are asked to create intellectual property, in the absence of a contract for services, the creator may well be the owner by default.
Intellectual property ownership of logos and other marketing material is important to clients. When a graphic designer or a public relations consultant creates logos and designs to be used in marketing material, they could arguably be the owners. If the creators then successfully apply to have themselves registered as the owners of the intellectual property, they would be vested with the right to exploit the intellectual property as they see fit. Clients would, therefore, not be entitled to utilise the intellectual property without an agreement with the creators and, possibly also, the payment to them of some form of royalty or licence fee. In some instances, clients would have to negotiate and have agreements in place in relation to the payment of a fee for the use of the intellectual property. There may be some instances where the creators would allow clients use of the intellectual property free of charge.
The question of who owns the intellectual property can sometimes be contentious and it is best to do everything to avoid disputes as far as possible. The law sets out the specific ownership criteria as discussed above. However, generally, in instances where an employee is creating the intellectual property or a contractor, such as a graphic designer or a public relations consultant is commissioned to create intellectual property, clear contractual arrangements should be put in place whereby the author or creator of the intellectual property explicitly acknowledges that the employer or the persons commissioning the work will be the owner and that they will assign or transfer ownership of the intellectual property accordingly. This will allow for all parties involved to be certain as to the terms and conditions of the arrangement, and the client will know that, at the end of the process, they will be able to utilise the intellectual property as they see fit.
Where ownership of intellectual property has already been registered by a person or entity, then assignment of ownership will have to be effected.
What is assignment?
Intellectual property is transmissible by assignment, in the same way as other personal or movable property. An assignment is the transfer of the property right from one person to the next. An assignment of a registered trade mark may be partial, that is, limited so as to apply to some but not all of the goods or services for which the trade mark is registered. An assignment of copyright may also be partial and limited to one or more, but not all of the rights which an owner of the copyright has the exclusive right to so, for a part but not the whole of the copyright period.
For an assignment to be effective, the assignment must be writing. Additionally, there are also applications forms that must accompany the instrument of assignment. These documents must be lodged at JIPO for the rights to be enforceable. It is best to seek legal advice when drafting assignment instruments and the requisite forms to ensure that all of the legal rights are met.
Helen Liu is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Helen may be contacted via Helen.liu@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.
