Legal Question in Intellectual Property in Canada

Copyright as the creator
I need advice on a matter of patents/copyright of a character,but as I am an English illustrator,living in Toronto, working for a company in Ireland,I am not sure who it is I should be asking advice from!
I created a new character last summer for a company in Ireland. I work for them on a freelance basis and have never had a written contract with them.
On the conception of this new character,we both agreed on a name for him and I then designed a logo to go on the back of each greetings card.
At this stage, I voiced my thoughts about the future of the character to the company in terms of royalties, buying the rights to him etc but was assured by the company that although they were investing in him,they simply saw him as another design in their portfolio and and not a large part of their sales.
Last week I conducted a search in the Irish Patents Trademark Database and discovered that an application had been put in to trademark my character:both the name and logo, and had been accepted. I was quite shocked at discovering this as they had not told me they were doing so, and they had in fact applied for the trademark before I had voiced my concerns.I would like to know my legal position in terms of who owns the copyright?

Asked on 1/29/08, 11:31 pm

1 Answer from Attorneys

Robert Brouillette Brouillette & Partners

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Re: Copyright as the creator

Your question concerns two distinct concepts: Trademarks and Copyright.

Trademark rights are acquired in North America by the first person to actually use a Trademark in commerce or to file an application to register it based on intent to use and elsewhere by the first person to file an application to register it, mostly irrespective of use. Therefore you do not appear to have acquired any trademark rights.

Copyright: This is more complicated as the applicable law varies somewhat on ac country by country basis. Assuming Canadian Law to be applicable, Copyright is owned by the creator absent a written contract to the contrary or an employment relationship (not consultancy). There is no Copyright protection for titles nor the names of characters. However, there is Copyright on the character itself. You would appear to own this Copyright but your client probably has an implied license to use it for the initially contemplated purpose.

IMPORTANT NOTICE: Please note that the above is only an expression of principles and is not a formal opinion as I would need more information to provide you with an opinion in this respect. Please contact me if you require a formal opinion.

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Answered on 1/30/08, 9:06 am

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