BHP article
BHP article
2008-05-12Partner News
One of the many nice things about practising intellectual property law is being able to advice clients in both commercial work and litigation. Experience in one side helps with the issues that arise in the other, and my work is pretty evenly split between the two
One area that receives the most ?cross-over? is how to deal with the intellectual property rights generated by a contractor. Just about every week I get a call from somebody who has fallen out with another party over the rights generated as a result of the work one of them carried out under contract to the other.
Almost as often, I am asked to help in situations where one of the parties is to contracted to carry out work the rights in which will be valuable. Then there are the situations where these issues were overlooked initially but become of vital importance later, notwithstanding the fact that the parties very much want to continue their collaboration. To be resolved successfully, these cases must be handled with sensitivity and experience.
It?s worth remembering that if you don?t set down clearly in advance what is to happen with the rights generated by a project, then what happens must be implied. If called upon, the courts will imply the minimum required to give effect to the intentions of the parties at the outset. The common (but incorrect) assumption is that rights generated will stay with the contractor and only a ?non-exclusive? licence is implied. In fact, any level of exclusivity may be implied, as may the conclusion that the rights generated belong to the client. Everything turns on the circumstances.
If you get the chance, it?s really important that these points be covered before any work is done. Just this year, fascinating cases have come before the courts relating to Daleks, Imperial Stormtroopers and a range of other exotic subjects. As interesting as these cases may be to the IP lawyer, they are painful and expensive experiences for the parties involved.
If you are faced with this kind of dispute there are, of course, alternatives. The best one, if you are on speaking terms with the other side, is mediation - a process by which the parties are helped by a professional but independent third party to deal with the issues. The mediator doesn?t adjudicate, he facilitates. A skilful mediator can achieve all sorts of unexpected results.
If you?re planning on providing or procuring services that will generate valuable IP, think carefully about the implications and talk them over with the other side. If you?re not confident of doing so yourself, get a lawyer to put it down in writing for you. It can save you astonishing amounts of grief later.
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