Copyright infringement claim

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Gannons successfully protected the copyright of an author by winning a copyright infringement claim at the Intellectual Property Enterprise Count (IPEC).

Our client was an author, and both the creator and owner of a series of illustrations. A clothing company exploited, without authority, the illustrations and their copyright. The infringing company compiled a catalogue of custom printed T-shirts. They also produced and sold t-shirts featuring the author’s illustrations without permission. After we won the initial claim, the court also dismissed a counterclaim challenging the Author’s IP rights.

Events leading up to the court case

Our client was the owner of two separate companies: a publishing company, and a clothing company. Our client had a development agreement with a marketing company, who promoted his publishing company. Using an IP assignment agreement, the author transferred the IP ownership of the illustrations from the publishing company to himself. Upon personally assuming ownership, the author then began selling t-shirts featuring his illustrations through his clothing business. The separate clothing company then began producing their own t-shirts infringing on our clients’ IP.

The authors’ case

The author claimed that the clothing company infringed his copyright by copying, issuing copies of articles with his illustrations to the public, and communicating to the public.

Infringing company’s case

The infringing company accepted it committed the infringing acts. However, they claimed they were only liable if the author proved copyright ownership. This would grant the author the legal capability to bring the copyright infringement claim against the infringing company.

This company stated at the outset that the marketing company owned the illustrations’ copyright, not the publishing company. They argued that the marketing company had developed the business, and the publishers had never assigned the ownership rights.

Accordingly, the author had not acquired ownership rights through the IP assignment agreement with his publishing company. Therefore the author had no right to bring the claim against them.

Issues before the court

Firstly, the court determined whether the author was entitled to bring the claim. If he was not entitled, the infringement claim would be struck off and the infringing company’s counterclaim would succeed.

Our IP ownership evidence

We investigated and analysed the background documents and established the author was the illustrations’ creator, author, and copyright owner. Then we provided the judge with an insight into the business relationship between the author’s publishing company, and the separate marketing company. We demonstrated that the publishing company had created the illustrations, and had the right to enter an agreement with the author.

The author was the first owner of the illustrations. The IP assignment agreement between the publishers and the author was valid.

The court’s decision

The court decided that there was no reason to accept the illustrations’ transfer of copyright ownership. Therefore the court concluded that the publishing company was the original copyright owner. The company had assigned its rights to the author, who was subsequently entitled to the IP ownership, and to exploit the illustrations.

The author’s claim succeeded, as he had legitimate interests to bring the copyright infringement claim.

Conclusions

Intellectual property rights are intricate. Establish your ownership from the outset. Then you’ve protected your business and created an exploitable asset. Properly document your ownership if the intellectual property right cannot be copyrighted. If you enter an agreement with another party, we ensure the agreement states who owns all current and future IP.

  • Great job done by all at Gannons. We were thoroughly impressed