[LondonOpenCoffee] Ownership of images and concepts - Product design Company

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[LondonOpenCoffee] Ownership of images and concepts - Product design Company

Rick Brownlow-2

Hi All,

 

Looking for some legal views on ownership.

 

KEY Points…

 

1.       10 years ago 2 of us formed a product design company with a 50% share each in the company.

 

2.       There was no written contract and no legal agreement when I sold my stake in the company and resigned last year.   

 

3.       I was the one who did all the creative work and hold all the 3D data and images after leaving the company.

 

 

So here is my question…

 

As there is no contract and I hold all the 3D data and images after leaving, do I own them legally?

 

 

Thanks in advance for any replies.

 

Steve

 

Steve Marshall-Rees

Design Director

 

cid:image001.jpg@01D333C1.54CB7140

 

Tel: +44 (0) 203 890 1886

Mobile: +44 (0) 7864684501

 

REGISTERED OFFICE ADDRESS: Kemp House 160 City Road London EC1V 2NX UNITED KINGDOM

The information contained in this message is privileged and confidential and intended for the addressee only. If you are not the intended recipient you are hereby notified that any use, dissemination, distribution or copying of this message and its attachments is strictly prohibited.

If you are not the intended recipient, kindly notify us immediately by e-mail, by fax or phone.

Please delete the message and do not review, copy or distribute it. Thank you. 

 

 

cid:image002.jpg@01D333C1.54CB7140

 


Virus-free. www.avg.com




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Re: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

Rick Brownlow-2
Hey Steve

Generally speaking (DISCLAIMER: this is not legal advice- for that speak to a lawyer) and as far as I know:

If you do some design work for a company within the company as an employee, or on contract for a company, and the work has been paid for as agreed, the ownership of said work belongs to the company, unless stipulated otherwise.

So if there was an understanding that the design work you did for the company was for the benefit of the company, ownership would appear to reside with the company.

However, if nothing was written down or agreed, that might be rather difficult to prove in court.

Presumably you're thinking of now doing something with the design work. Might it be possible to re-design the designs so that they differ substantially from the originals, thus avoiding any IP issues?

Does the company still exist, are they still doing the same stuff and do you have a good relationship with the owner? If the answer to all is yes, this might be best resolved through a friendly chat.

My 2c.

Good luck!





On 12 February 2018 at 13:48, Steve M Rees <[hidden email]> wrote:

Hi All,

 

Looking for some legal views on ownership.

 

KEY Points…

 

1.       10 years ago 2 of us formed a product design company with a 50% share each in the company.

 

2.       There was no written contract and no legal agreement when I sold my stake in the company and resigned last year.   

 

3.       I was the one who did all the creative work and hold all the 3D data and images after leaving the company.

 

 

So here is my question…

 

As there is no contract and I hold all the 3D data and images after leaving, do I own them legally?

 

 

Thanks in advance for any replies.

 

Steve

 

Steve Marshall-Rees

Design Director

 

cid:image001.jpg@01D333C1.54CB7140

 

Tel: <a href="tel:+44%2020%203890%201886" value="+442038901886" target="_blank">+44 (0) 203 890 1886

Mobile: <a href="tel:+44%207864%20684501" value="+447864684501" target="_blank">+44 (0) 7864684501

 

REGISTERED OFFICE ADDRESS: Kemp House 160 City Road London EC1V 2NX UNITED KINGDOM

The information contained in this message is privileged and confidential and intended for the addressee only. If you are not the intended recipient you are hereby notified that any use, dissemination, distribution or copying of this message and its attachments is strictly prohibited.

If you are not the intended recipient, kindly notify us immediately by e-mail, by fax or phone.

Please delete the message and do not review, copy or distribute it. Thank you. 

 

 

cid:image002.jpg@01D333C1.54CB7140

 


Virus-free. www.avg.com




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RE: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

Rick Brownlow-2
In reply to this post by Rick Brownlow-2

Thanks for the advice!

 

On the point of re-designing the designs, This is a very difficult area and was bitten badly many years ago that the” 7 points of change rule” was valid….it’s a myth!! I was told at Uni that 7 points of change was allowable to change a design, it was a lie and cost me £4000.

 

The company is still going and I’m waiting until it is truly dead before using the material, and only material that is not covered by NDAs or contracts.

 

email reply

 

From: [hidden email] [mailto:[hidden email]]
Sent: 12 February 2018 13:02
To: [hidden email]
Subject: Re: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

 

Hey Steve

 

Generally speaking (DISCLAIMER: this is not legal advice- for that speak to a lawyer) and as far as I know:

 

If you do some design work for a company within the company as an employee, or on contract for a company, and the work has been paid for as agreed, the ownership of said work belongs to the company, unless stipulated otherwise.

 

So if there was an understanding that the design work you did for the company was for the benefit of the company, ownership would appear to reside with the company.

 

However, if nothing was written down or agreed, that might be rather difficult to prove in court.

 

Presumably you're thinking of now doing something with the design work. Might it be possible to re-design the designs so that they differ substantially from the originals, thus avoiding any IP issues?

 

Does the company still exist, are they still doing the same stuff and do you have a good relationship with the owner? If the answer to all is yes, this might be best resolved through a friendly chat.

 

My 2c.

 

Good luck!

 

 

 

 

 

On 12 February 2018 at 13:48, Steve M Rees <[hidden email]> wrote:

Hi All,

 

Looking for some legal views on ownership.

 

KEY Points…

 

1.       10 years ago 2 of us formed a product design company with a 50% share each in the company.

 

2.       There was no written contract and no legal agreement when I sold my stake in the company and resigned last year.   

 

3.       I was the one who did all the creative work and hold all the 3D data and images after leaving the company.

 

 

So here is my question…

 

As there is no contract and I hold all the 3D data and images after leaving, do I own them legally?

 

 

Thanks in advance for any replies.

 

Steve

 

Steve Marshall-Rees

Design Director

 

cid:image001.jpg@01D333C1.54CB7140

 

Tel: <a href="tel:+44%2020%203890%201886" target="_blank">+44 (0) 203 890 1886

Mobile: <a href="tel:+44%207864%20684501" target="_blank">+44 (0) 7864684501

 

REGISTERED OFFICE ADDRESS: Kemp House 160 City Road London EC1V 2NX UNITED KINGDOM

The information contained in this message is privileged and confidential and intended for the addressee only. If you are not the intended recipient you are hereby notified that any use, dissemination, distribution or copying of this message and its attachments is strictly prohibited.

If you are not the intended recipient, kindly notify us immediately by e-mail, by fax or phone.

Please delete the message and do not review, copy or distribute it. Thank you. 

 

 

cid:image002.jpg@01D333C1.54CB7140

 

 

Virus-free. www.avg.com





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Creative Director | Consultant | Film maker

Latest work for Adidas

 

 

FOLLOW ME ON SOCIAL MEDIA:

www.twitter.com/tomhayton

Tel: +44 (0) 208 123 7437 (UK)

       +44 (0) 7926 800 117 (UK mobile)

       +1  (650) 209-6615 (USA)

 

       





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RE: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

Rick Brownlow-2
In reply to this post by Rick Brownlow-2
The employee point's not necessarily valid unless covered by a contract AFAIK , but it is valid if you're a director 

On 12 Feb 2018 13:37, "Steve M Rees" <[hidden email]> wrote:

Thanks for the advice!

 

On the point of re-designing the designs, This is a very difficult area and was bitten badly many years ago that the” 7 points of change rule” was valid….it’s a myth!! I was told at Uni that 7 points of change was allowable to change a design, it was a lie and cost me £4000.

 

The company is still going and I’m waiting until it is truly dead before using the material, and only material that is not covered by NDAs or contracts.

 

email reply

 

From: [hidden email] [mailto:[hidden email]]
Sent: 12 February 2018 13:02
To: [hidden email]
Subject: Re: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

 

Hey Steve

 

Generally speaking (DISCLAIMER: this is not legal advice- for that speak to a lawyer) and as far as I know:

 

If you do some design work for a company within the company as an employee, or on contract for a company, and the work has been paid for as agreed, the ownership of said work belongs to the company, unless stipulated otherwise.

 

So if there was an understanding that the design work you did for the company was for the benefit of the company, ownership would appear to reside with the company.

 

However, if nothing was written down or agreed, that might be rather difficult to prove in court.

 

Presumably you're thinking of now doing something with the design work. Might it be possible to re-design the designs so that they differ substantially from the originals, thus avoiding any IP issues?

 

Does the company still exist, are they still doing the same stuff and do you have a good relationship with the owner? If the answer to all is yes, this might be best resolved through a friendly chat.

 

My 2c.

 

Good luck!

 

 

 

 

 

On 12 February 2018 at 13:48, Steve M Rees <[hidden email]> wrote:

Hi All,

 

Looking for some legal views on ownership.

 

KEY Points…

 

1.       10 years ago 2 of us formed a product design company with a 50% share each in the company.

 

2.       There was no written contract and no legal agreement when I sold my stake in the company and resigned last year.   

 

3.       I was the one who did all the creative work and hold all the 3D data and images after leaving the company.

 

 

So here is my question…

 

As there is no contract and I hold all the 3D data and images after leaving, do I own them legally?

 

 

Thanks in advance for any replies.

 

Steve

 

Steve Marshall-Rees

Design Director

 

cid:image001.jpg@01D333C1.54CB7140

 

Tel: <a href="tel:+44%2020%203890%201886" target="_blank">+44 (0) 203 890 1886

Mobile: <a href="tel:+44%207864%20684501" target="_blank">+44 (0) 7864684501

 

REGISTERED OFFICE ADDRESS: Kemp House 160 City Road London EC1V 2NX UNITED KINGDOM

The information contained in this message is privileged and confidential and intended for the addressee only. If you are not the intended recipient you are hereby notified that any use, dissemination, distribution or copying of this message and its attachments is strictly prohibited.

If you are not the intended recipient, kindly notify us immediately by e-mail, by fax or phone.

Please delete the message and do not review, copy or distribute it. Thank you. 

 

 

cid:image002.jpg@01D333C1.54CB7140

 

 

Virus-free. www.avg.com





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Creative Director | Consultant | Film maker

Latest work for Adidas

 

 

FOLLOW ME ON SOCIAL MEDIA:

www.twitter.com/tomhayton

Tel: <a href="tel:+44%2020%208123%207437" value="+442081237437" target="_blank">+44 (0) 208 123 7437 (UK)

       <a href="tel:+44%207926%20800117" value="+447926800117" target="_blank">+44 (0) 7926 800 117 (UK mobile)

       <a href="tel:(650)%20209-6615" value="+16502096615" target="_blank">+1  (650) 209-6615 (USA)

 

       





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Re: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

Rick Brownlow-2
In reply to this post by Rick Brownlow-2
It depends on the circumstances.

It is very well explained here:





On 12 February 2018 at 14:49, Andrew Lockley <[hidden email]> wrote:
The employee point's not necessarily valid unless covered by a contract AFAIK , but it is valid if you're a director 

On 12 Feb 2018 13:37, "Steve M Rees" <[hidden email]> wrote:

Thanks for the advice!

 

On the point of re-designing the designs, This is a very difficult area and was bitten badly many years ago that the” 7 points of change rule” was valid….it’s a myth!! I was told at Uni that 7 points of change was allowable to change a design, it was a lie and cost me £4000.

 

The company is still going and I’m waiting until it is truly dead before using the material, and only material that is not covered by NDAs or contracts.

 

email reply

 

From: [hidden email] [mailto:[hidden email]]
Sent: 12 February 2018 13:02
To: [hidden email]
Subject: Re: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

 

Hey Steve

 

Generally speaking (DISCLAIMER: this is not legal advice- for that speak to a lawyer) and as far as I know:

 

If you do some design work for a company within the company as an employee, or on contract for a company, and the work has been paid for as agreed, the ownership of said work belongs to the company, unless stipulated otherwise.

 

So if there was an understanding that the design work you did for the company was for the benefit of the company, ownership would appear to reside with the company.

 

However, if nothing was written down or agreed, that might be rather difficult to prove in court.

 

Presumably you're thinking of now doing something with the design work. Might it be possible to re-design the designs so that they differ substantially from the originals, thus avoiding any IP issues?

 

Does the company still exist, are they still doing the same stuff and do you have a good relationship with the owner? If the answer to all is yes, this might be best resolved through a friendly chat.

 

My 2c.

 

Good luck!

 

 

 

 

 

On 12 February 2018 at 13:48, Steve M Rees <[hidden email]> wrote:

Hi All,

 

Looking for some legal views on ownership.

 

KEY Points…

 

1.       10 years ago 2 of us formed a product design company with a 50% share each in the company.

 

2.       There was no written contract and no legal agreement when I sold my stake in the company and resigned last year.   

 

3.       I was the one who did all the creative work and hold all the 3D data and images after leaving the company.

 

 

So here is my question…

 

As there is no contract and I hold all the 3D data and images after leaving, do I own them legally?

 

 

Thanks in advance for any replies.

 

Steve

 

Steve Marshall-Rees

Design Director

 

cid:image001.jpg@01D333C1.54CB7140

 

Tel: <a href="tel:+44%2020%203890%201886" target="_blank">+44 (0) 203 890 1886

Mobile: <a href="tel:+44%207864%20684501" target="_blank">+44 (0) 7864684501

 

REGISTERED OFFICE ADDRESS: Kemp House 160 City Road London EC1V 2NX UNITED KINGDOM

The information contained in this message is privileged and confidential and intended for the addressee only. If you are not the intended recipient you are hereby notified that any use, dissemination, distribution or copying of this message and its attachments is strictly prohibited.

If you are not the intended recipient, kindly notify us immediately by e-mail, by fax or phone.

Please delete the message and do not review, copy or distribute it. Thank you. 

 

 

cid:image002.jpg@01D333C1.54CB7140

 

 

Virus-free. www.avg.com





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Creative Director | Consultant | Film maker

Latest work for Adidas

 

 

FOLLOW ME ON SOCIAL MEDIA:

www.twitter.com/tomhayton

Tel: <a href="tel:+44%2020%208123%207437" value="+442081237437" target="_blank">+44 (0) 208 123 7437 (UK)

       <a href="tel:+44%207926%20800117" value="+447926800117" target="_blank">+44 (0) 7926 800 117 (UK mobile)

       <a href="tel:(650)%20209-6615" value="+16502096615" target="_blank">+1  (650) 209-6615 (USA)

 

       





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Re: [LondonOpenCoffee] Ownership of images and concepts - Product design Company

Rick Brownlow-2
In reply to this post by Rick Brownlow-2

Steve, here's the deal.

Under English copyright Law, if you sent your designs to anyone, inc your previous Company, by email, post etc., your copyright exists in the work(s). It is not necessary to register it.

In other words the I.P. is technically yours, so long as there is no agreement (of any sort, inc a shareholders' agreement) which could be construed to otherwise assign the copyright/IP, even temporarily.....and that includes e.g. emails (if there are any) where you say (or indicate) that they can use them.

The fact that your prev Company may or may not have used or intended to use the IP, without an official agreement or assignment puts the Company at risk and not you.

But if your previous Company and or any of its Directors/shareholders can reasonably make a case that they contributed to the original designs, they could argue that copyright is shared.

Clearly you provided the designs to them previously (even if without an agreement), so it's reasonable for them to have used them, subsequently, on the basis of an informal understanding which existed at the time. i.e. it would be diff to sue them for using the designs previously.

You need to consider whether, on the balance of probability, your previous Company are likely to go legal on this e.g. on the basis that you had effectively given them a right to use your designs by a) passing the designs to them b) not objecting to their use c) not withdrawing your designs. It could be costly defending that, regardless of the Company's weak case.

If it was me, I would formally write to them, stating simply that 1) they are in possession of designs (…a list) which are your personal copyright 2) that you now require them to be returned to you forthwith and all copies destroyed 3) that they have no further right to use the designs or any designs derived from your original work(s).

Rgds Howard

-----Original Message----- From: Tom Hayton <[hidden email]> To: LondonOpenCoffee-list <[hidden email]> Sent: Mon, 12 Feb 2018 13:56 Subject: Re: [LondonOpenCoffee] Ownership of images and concepts – Product design Company

It depends on the circumstances.

It is very well explained here:

https://www.gov.uk/guidance/ownership-of-copyright-works

On 12 February 2018 at 14:49, Andrew Lockley <[hidden email]> wrote:

The employee point's not necessarily valid unless covered by a contract AFAIK , but it is valid if you're a director 

On 12 Feb 2018 13:37, “Steve M Rees” <[hidden email]> wrote:

Thanks for the advice!   On the point of re-designing the designs, This is a very difficult area and was bitten badly many years ago that the” 7 points of change rule” was valid….it’s a myth!! I was told at Uni that 7 points of change was allowable to change a design, it was a lie and cost me £4000.   The company is still going and I’m waiting until it is truly dead before using the material, and only material that is not covered by NDAs or contracts.  

 

From: [hidden email] [[hidden email]] Sent: 12 February 2018 13:02 To: [hidden email] Subject: Re: [LondonOpenCoffee] Ownership of images and concepts – Product design Company

 

Hey Steve

 

Generally speaking (DISCLAIMER: this is not legal advice- for that speak to a lawyer) and as far as I know:

 

If you do some design work for a company within the company as an employee, or on contract for a company, and the work has been paid for as agreed, the ownership of said work belongs to the company, unless stipulated otherwise.

 

So if there was an understanding that the design work you did for the company was for the benefit of the company, ownership would appear to reside with the company.

 

However, if nothing was written down or agreed, that might be rather difficult to prove in court.

 

Presumably you're thinking of now doing something with the design work. Might it be possible to re-design the designs so that they differ substantially from the originals, thus avoiding any IP issues?

 

Does the company still exist, are they still doing the same stuff and do you have a good relationship with the owner? If the answer to all is yes, this might be best resolved through a friendly chat.

 

My 2c.

 

Good luck!

 

 

 

 

 

On 12 February 2018 at 13:48, Steve M Rees <[hidden email]> wrote:

Hi All,   Looking for some legal views on ownership.   KEY Points…   1.       10 years ago 2 of us formed a product design company with a 50% share each in the company.   2.       There was no written contract and no legal agreement when I sold my stake in the company and resigned last year.      3.       I was the one who did all the creative work and hold all the 3D data and images after leaving the company.     So here is my question…   As there is no contract and I hold all the 3D data and images after leaving, do I own them legally?     Thanks in advance for any replies.   Steve   Steve Marshall-Rees Design Director  

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