Trademark Law
A trademark is anything that is used to distinguish the goods or services of one person or entity from those of another. For example, a word, phrase, or logo can be trademarked. Trademark issues rarely arise in the lighting design world. The only time that they are relevant is when a company seeks to protect its corporate logo or catchphrase. Similar to a copyright, trademark protection automatically attaches through the use of a particular mark, but greater protections will be afforded if the mark is registered.
Employer–Employee Ownership
It would seem to make sense that the individual who created a particular design should be the rightful owner of the work. However, as we said at the beginning of this article, intellectual property statutes do not follow common sense. Many lighting designers have misconceptions about the ownership of their work as it relates to their employer, and they erroneously apply seemingly straightforward logic. For instance, they might think: “I created the design, so it must be mine.”
To the contrary, any work prepared by an employee, including a lighting design or scheme, which is within the scope of his or her employment, is considered a “work made for hire” and belongs to the employer. Conversely, if the work is created by an independent contractor, such as a lighting design consultant, the employer typically does not retain any rights to the work, unless agreed upon in the contract.
For employers, protecting their intellectual property rights is one of the most important precautionary measures they can take. They have a clear financial interest in protecting their employees’ creations, but few employers take the necessary precautions to secure and protect their company’s rights.
Lighting design firms who utilize independent contractors can protect their intellectual property rights by including a provision in the contract clearly stating that all designs and related work created by the independent contractor are the property of the lighting design firm. So, while an independent contractor usually has ownership rights over the designs she created while retained as an independent contractor by a design firm, the parties can agree to transfer those rights.
Design firms whose employees generate intellectual property (i.e. lighting designs and schematics), should have their employees enter into a written transfer and confidentiality agreement for the practical purpose of confirming that the employees understand that such “work made for hire” is the exclusive property of the firm. It may be helpful to have a section of the employee handbook or manual dedicated to an explanation of “work made for hire,” but it is always better for the employer to have the employee sign a specific agreement separate from this. It is easier for a jury to conclude that an employee did not read the handbook and was therefore unaware of the policy than it is to believe that same employee when she has signed a specific agreement.
Client–Designer Ownership
The most common claims when it comes to litigation over intellectual property ownership rights between lighting designers and their clients involve a client using the designer’s designs for additional areas of a particular project or when the designer is fired from the job, yet the client wants to move forward with the implementation of the designer’s drawings.
Clients often feel that since they paid the designer to create a lighting plan or drawings that they automatically own those. The fact is that they may not. Generally, copyright protection extends to the author of the work, unless there is a written agreement to the contrary or the job is a “work for hire.” But lighting designers are usually independent contractors and rarely employees.
As demonstrated by various court decisions throughout the country, if a designer is an independent contractor, and there is no express agreement stating that the lighting design plans are “works for hire,” the designer is considered the author and copyright protection for the plans is extended to her.
Courts have established that designers hired by clients for individual projects will not be considered to have produced “works for hire.” The custom in the architectural design profession, which can be extended to lighting design, is for the designer, and not the client, to retain ownership of the drawings and plans.
A designer can assign or otherwise transfer her ownership in a copyright pursuant to 17 United States Code § 201(d). Written agreements between designers and their clients may alter the ownership of copyrights. Thus, if a designer or a design firm is interested in retaining copyright protection over their designs, it is important to include a provision in any contract which explicitly states that retention of ownership.
Oftentimes, a designer or design firm is hired as a subcontractor and is required to sign the architect’s or general contractor’s agreement. Almost every subcontract offered to a lighting design firm contains a clause which requires the designer to transfer all intellectual property rights to the architect, general contractor, developer, or property owner. Depending upon the architect or general contractor, a lighting designer may be successful in negotiating for a provision to maintain ownership of her designs. But when a designer transfers or waives her rights to a design, the client is then free to modify it or to use it for additional projects beyond the scope of the designer’s original intention.
If, however, the designer maintains ownership rights and the client is found to have infringed upon her copyright, the designer may successfully obtain an injunction. If the designs were registered with the copyright office, she may even be entitled to monetary damages. As a practical matter though, direct evidence of copying or infringement is rare. Courts will require evidence that the client had access to the copyrighted work—and thus the opportunity to copy that work—and will want to see that there is a sufficient degree of similarity between the two works in order to successfully argue for an inference of copying.
As you can see, the laws that govern intellectual property rights can be very confusing and complex to navigate. The general rules for ownership of a lighting design and the relationship between employees and clients are important to keep in mind when starting any project. And it might be wise to have any contract or subcontract that you have to sign for an architect or general contractor reviewed by an attorney who is well-versed in intellectual property laws before you put your mark on the dotted line.