IP is often the most valuable asset of a business, and includes your logo (if sufficiently artistic in design), and any copyright in content, software or information technology systems.
To protect this IP, you need to ensure all contracts (with both employees and contractors) clearly identify who owns the IP, because under the Australian Copyright Act 1968, employees and contractors are treated differently, and the position is roughly summarised as follows:
Intellectual property created in the course of employment is owned by the employer unless otherwise stated in the employment contract or relevant workplace policies. This does not extend to IP created by an employee that is not related to their employment.
If you pay a contractor to develop content, develop a website or design a logo, and the contract for services with that contractor is silent on ownership of IP, then that IP remains the property of the contractor because the author or creator of a work is the owner of the copyright. This is the case even though the business paid for it, and is a common issue when designing websites (so it is crucial that you ensure the contractor agrees that the IP created by that contractor is yours).
How can you protect yourself?
To ensure that you own the IP, is important that both employee contracts and contracts for services with contractors include an IP clause which:
- Clearly identifies the ownership of IP, particularly in relation to contractors and state that the IP is transferred to you on its creation.
- Clearly states your right to seek injunctions and liquidated damages if the employee or contractor infringes your IP, betrays confidence or otherwise misbehaves.
The above is a simplified summary of some of the common issues in IP, and you should seek experienced advice from an intellectual property lawyer to ensure that it is protected properly. Further, the cost of developing IP can be the subject of a research and development grant.
Please contact Angus Murray at our office on +617 3229 4060 to discuss how to protect your IP, and how to apply for the research and development grant for the associated cost of developing same.