17 February 2021 Patents Gianluca Pulieri

The challenges of IP portfolio management can vary from business to business. The assets in an IP portfolio and how they work together are unique to the activities and goals of a business and, in many cases, of specific industries. In this article, we will discuss the challenges presented by the unique portfolio of a top-quality design company in the lighting sector.

Managing Legal Relationships with Contract Designers

The main concerns of the client in this case were to protect the unique artistic designs of their models of lamps, which had been created by famous designers. The first step for Jacobacci & Partners was to develop relationships with the designers, who were mostly contractors, so they were working independently from the client. Some legacy designs were also managed by a curator that dealt with the family and heirs of past designers. Since the client-designer relationships were primarily contractual, the designers also changed throughout the years.

Collaboration Contracts between the Client and Designers

Jacobacci & Partners worked with both parties to develop contracts with clauses that protected the designer and the client throughout the entire process. This ensured a secure transfer of IP rights to the work created by the designer, enabling the client to use, adapt or alter the designs as needed. Simply owning a design does not give the owner the right to reproduce, distribute or alter it. The original creator of the design is the copyright owner by default, and they possess the author’s rights. So, it is necessary to transfer those rights from the designer to the company.

Contracts also define the collaborative terms of the relationship between the client and the designer, establishing the obligations of both parties to each other. Whether the contractor requires financial support to carry out their project or the client requires defined project milestone deliveries, each agreement is unique based on the relationship and the design commissioned.

A Diverse IP Portfolio of Famous Designs

Over the years, the client had developed numerous designs for hundreds of lamp models, some of which were visually renowned. Jacobacci & Partners continuously consults with the client on its IP portfolio assets to ensure it is adequately protecting the most valuable assets with copyright and three-dimensional trademarks for its cult-classic designs.

As part of their IP portfolio management, the client requires highly specialized design protection. Since the function of a lamp is easily replicable, the ornamental design able to be protected with a design patent. However, given the artistic nature of their products, Jacobacci & Partners worked with the client to file for copyright protection, which protects original works of authorship.

The Importance of Copyright Protection

Copyright protection relates to literary and artistic creations that are original works. While copyrighting a design can be tricky, it can also prove valuable in the case of genuine artistic productions. In this case, the client could only protect the ornamental designs of their lamps for up to 25 years with a design patent. As such, we worked with the client to file for copyright protection, which extended the protection time significantly.

A copyrighted design can be enforced up to 70 years after the death of the artist. This meant the client was able to protect designs, such as one of its iconic lamps from the 1950s, as long as the lamps in question had the initial three-dimensional mark from the brand. As part of its IP portfolio management, Jacobacci & Partners also filed the copyright in China and the client has been able to protect its design from potential overseas counterfeiting.

The Berne Convention for the Protection of Literary and Artistic Works was established in 1886 to handle copyright protection for authors on an international level and determine the minimum protection for them. While this convention is widely adopted in 177 countries, it only provides minimum standards for protecting artists and the artist or copyright owner is still obliged to monitor for copyright infringement and pursue legal action. For this reason, it is advisable to work with an IP portfolio management firm to determine how best to handle your assets in a cost-effective manner.

For the past 140 years, Jacobacci & Partners has provided best-in-class IP portfolio management services to companies with industry-specific challenges. In many cases, this can extend beyond traditional services, such as filing design patents, to include relationship management and contract development with designers. It provides a complete range of services to enforce and defend IP rights against infringement, so they may continue to collaborate with artists and produce unique designs.


Article by: Gianluca Pulieri