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who owns artwork in trademark license?

Posted by . updated on 11/11/2009
I am in trademark licensing negotiations with a t-shirt company.  They are creating a new line using my trademark, lets say it's "Born free," and planning on mass distributing it.  My question is who should own the new artwork created for the new line?  My belief is that the owner of the trademark would have to own the artwork.

Thank you.
Answers (5)
 
JSonnabend
Who owns the new artwork can be determined based on the value of the agreement.  If the licensee is paying a sufficiently high royalty, the licensee may want to retain ownership of any new artwork.  On the other hand, you may feel that the royalty rate does not cover ownership of any new artwork.  So in the end, it is a business decision.

Of course, if the new artwork isn't created under a proper agreement, neither party may own the artwork, that right going instead to the artist.

- Jeff
 
 
bigdaddy
Thanks Jeff.

One thought though, if the artwork contains the trademark and is being sold as a part of the trademark and adding to the goodwill of the mark, doesn't that means that the artwork is now a new trademark?
 
 
JSonnabend
It certainly can mean that.

- Jeff
 
 
bigdaddy
So, regarding the new trademarks being created in the new line, if the licensor wants to own those new marks it would have to be written in the contract.  Is that a usual part of a contract?
 
 
JSonnabend
You are confusing the underlying rights in the artwork embodied in a logo (copyrights) with the rights to the logo as a trademark (trademark rights).  It is entirely possible for one party to own the copyrights in a logo and another to own the trademark rights. 

If the licensee is using your mark or any variation of it (including a new logo), you better make darn sure that the license agreement is 100% clear that the licensee acquires no TM rights and that any goodwill acquired in the marks inures to your benefit.

You are using a qualified attorney to handle this for you, yes?  If not, you should understand fully that it is possible to lose your trademark rights through a poorly conceived license agreement.

- Jeff
 

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