Legal Question in Business Law in Florida

Re: copyrights and trademarks

You need a written agreement with the company that addresses these ownership issues. This is not as much of a concern on the trademark side as on the copyright side. Reason being, trademark rights are obtained through use (i.e., presumably, your company will be the one using the marks, not the design company). However, keep in mind that some trademarks also evoke copyright issues such as where there are stylized and/or design elements incorporated that might give rise to copyright.

The real ownership concern is on the copyright side, since authorship (as opposed to use in trademarks) has a large part to do with ownership. The presumption is that whoever creates the work is the owner, but there are several exceptions to that rule. The most commonly relied upon exception is the work-for-hire doctrine which says that an employer owns the copyright for works created by an employee within the scope of his or her employment. This is deceptively simple in appearance, however, since there is a multi-factor analysis that goes into whether a person is an employee under the work-for-hire doctrine or an independent contractor not bound by the work-for hire provision. The Copyright Office states very clearly that the determination of whether a work can be treated as a "work-for-hire" is difficult "because the statutory definition is complex and not always easily applied."

Sometimes companies will try to side-step this by entering into an agreement with an independent contractor and calling the relationship a "work-for-hire"; however, you must use extreme caution in such situations since only a few categories of works can actually be treated as a "work-for-hire." Depending upon the circumstances, the better practice might be to enter into an agreement that says it is a work-for-hire, but in the alternative is an assignment of any rights.

You should also address domain name ownership to ensure that your domain name is not hijacked if the relationship with the designer deteriorates in the future. Finally, you should register all of your important trademarks and copyrights with the appropriate agencies.

In the end, trademark and copyright issues are very complex and every situation is unique. You should consult with an experienced attorney to ensure that your matter is handled properly. Feel free to contact me if I can be of any assistance.

Re: copyrights and trademarks

The simplest way to get control is to have them sign contracts. You may want to take other actions to protect your rights and you can also TROANN your domain. My firm is focused on Internet law.

Re: copyrights and trademarks

You should get a work for hire agreement for them, and register your copyrights and trademarks.