CHAPTER 7
Parties to IP Rights, Part II: Protection of the Weak and Strong to which IP rights attach move from owner to user to consumer, the various parties that touch on those rights will tend to change position in their bargaining power, from strong to weak to strong and then weak again. The ownership of IP rights is complicated by the fact that, although the tangible properties may be transferred from hand to hand, the intangible IP rights remain with the owner. To a large extent, the owner must count on the integrity of consumers to respect the owner’s IP rights, because of the expense of fighting all but the most flagrant infringements.
AS THE PRODUCTS, SERVICES, CREATIONS AND PROCESSES
Creator KNOW WHO OWNS IT
Your company’s employees create IP—perhaps clothing designs, trademarks, logos, and inventions for the transference of designs onto fabric. You decide to license the IP rights to another company to manufacture your clothing. Your license agreement states that the licensee must protect the mark within its own country on your behalf, and based on that authority, your licensee files twelve trademark applications for your marks in his name to ensure coverage of stickers, paper, jewelry, luggage, and other clothing accessories. If your licensee is allowed to retain the trademarks, he will also have a right to use them on his own goods and your own marks are liable to be diluted. You will have to negotiate with your licensee for the ownership rights to the trademarks, if possible, paying only the filing costs. Meanwhile, your employee who invented the design transference process itself licenses it to his friend who wants to use it in the production of canvas bags. With regard to your own employee, if you do not have an express agreement assigning his rights to the company, you will have some tricky negotiations with him and his licensee, because a patent belongs to the inventor in the absence of an assignment to the employer. T H E M O R A L : Your ownership rights in your IP must be clearly stated in agreements
and understood by all parties, and you should be the only person responsible for asserting your IP rights. SECURE OWNERSHIP RIGHTS BEFORE REVEALING THE IP
A lot of time and labor has been spent in developing your company’s database program. Now that it is perfected, your company’s management is considering whether to license it to a software publisher or otherwise to sell rights to use it to
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