According to the complaint, in 2006, artist Juli Adams was approached by Hartz to create and design a pet toy line based on her cartoonish animal paintings. In the context of copyright law at least, where a work is created within the scope of one’s employment or the work is a specially commissioned work and the parties have agreed that the work is a “work made for hire,” ownership rests with hiring party. Patent law is similar when it comes to works made during the scope of employment. But here, the artist and Hartz had a different agreement relating to Adams’ “intellectual property” – the two parties agreeing that the rights remained with her and Hartz licensed the intellectual property from her. In addition to her intellectual property rights for her work developing the products, the artist also coined the trademark ANGRY BIRDS for the line according to the complaint. The product packaging features her bio and states in general terms “Licensed from the art of Juli Adams.” The term of the agreement began after the first sale of a licensed product, according to the complaint.
Following Hartz’s “key responsibilities” in the agreement to renew and protect the intellectual property of Adams, Hartz filed a trademark application for ANGRY BIRDS for pet toys. The intent-to-use application was filed by Hartz on March 28, 2007 listing Hartz as the owner of the intellectual property, in contrast to the apparent terms of the agreement as described in the complaint.
By signing a trademark application, the signatory confirms that “the applicant declares that it has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services.” Furthermore, the signatory declares that: “he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.” The signatory here was Hartz’s attorney, who confirmed Hartz’s rights, interest, and ownership in the mark by signing the document. This application likely should have been filed in Adams’ name as the owner of the intellectual property rights, if this was intellectual property contemplated by the agreement as being owned by her and licensed to Hart.
Not all the facts appear to be out here yet, as the complaint leaves a lot of unanswered questions, especially regarding the scope of her intellectual property rights. For instance, and importantly allegedly months after the ANGRY BIRDS application was filed, an amendment to the license agreement was executed that granted Hartz “the right to file copyright, trademark and other intellectual property right filings in Hartz’s name, in its discretion, for all of the Licensed Products” including a mark for THE JULI ADAMS COLLECTION (an application for which was filed by Hartz at the same time as ANGRY BIRDS). The complaint disputes the validity of that amendment.
What does this mean for the marketers, product developers, advertisers and others of you who create intellectual property? One takeaway may be to pay more attention to obtaining a well-crafted agreement that meets your objectives and your understanding of your rights. Even if the intention is to license your intellectual property, an owner of trademarks puts themselves in the best position, even if they don’t want the responsibility for the filings going forward, by filing applications in their own name and let the licensee agree to pay all fees associated with them. It also helps clarify issues related to the owned rights to be able to refer at least to a filed copyright, patent or trademark application.