question

I am a founder of a management consulting firm and partner often with other boutique firms or other independent consultants to develop a client solution or article/publication. How should I be protecting myself and my IP that I have a hand in creating?

Supriya Desai, Principal

ASC* ADVISORY

answer

Protecting your intellectual property should be at the forefront of your business planning. Copyright law can be complex, and leaving issues of authorship and ownership to "good faith" is risky. Here are three broad issues to consider and recommend that you protect your business and your works by consulting a copyright lawyer.

Ownership. First, when you create a copyrighted work, you're usually both the author and first owner. However, in an employment context, the employer is both the author and owner of the work. Assuming that, as the founder of the consulting firm, you are an employee, the consulting firm will be the author and owner of any work you (or any employee) create as part of your job within the firm. If you are commissioned to produce a certain piece, your end product could also fall within the work-for-hire doctrine, but only if it is a particular kind of work mentioned in the copyright statute and a written agreement to that effect is signed. The only way that your client can own your work is if you sign a written agreement transferring ownership. Because you haven't indicated that you address ownership of the copyright in your agreements, your firm remains the author (and owner) of the work. You are legally free to use the materials for any other clients.

Joint works. Second, you indicate that you partner with other firms and consultants to develop articles or publications. I assume you may also work with client companies on some of the handouts or frameworks. These may qualify as "joint works" under copyright law. If they do, both your firm and the other contributor(s) will be equal co-owners of the articles or handouts.

Register. Although copyright protection is automatic, there are many advantages to including a copyright notice "©" with the date and name of your firm, and registering your work.

About the author

Susan Marsnik is a professor, of ethics and business law at the University of St. Thomas Opus College of Business.