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Specialist Consulting Agreements

DESIGN SERVICES

There are particular considerations associated with the provision of design services, primarily because the way that many designers price their services. It is common for designers to provide a design to a customer and charge the customer based on the particular usage that the design was originally designed for.

It is often common for the designer to charge (often significant amounts) for additional usage or usage on similar projects, e.g. if a designer designs a logo or branding for a particular marketing campaign, the designer may charge the customer where that branding is used on a particular marketing campaign, and may charge additional amounts if that branding is used in a subsequent marketing campaign.

Where the designer creates a design for a product the designer may require payment based on the number of products sold, or the geographic areas in which the products are sold.

Where the design of a product is new and distinctive, it may be possible to protect the design as a registered design under the Designs Act 2003 (Cth). Designs of products are protected primarily under the Designs Act 2003 (Cth) whereas computer software is protected as a literary work under the Copyright Act 1968 (Cth). In addition it is possible that the designer has been asked to create a design which will become a trade mark of the customer under the Trade Marks Act 1995 (Cth). Accordingly the intellectual property right ownership clause in the agreement needs to reflect these requirements.

The Designs Act 2003 (Cth) grants the registered owner of a registered design a number of exclusive rights. These rights include the right to:

Make, or offer to make a product, in relation to which the design is registered;
to import such a product into Australia for sale, or for use for the purpose of any trade or business;
to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product;
to use such a product in any way for the purpose of trade or business; and to keep such a product for the purpose of doing any of these the last two items; and
to authorise any person to do any of the things mentioned above.

Generally the person that is entitled to obtain registration of a registrable design is the person who created the design, unless that person is:

an employee who created the design in the course of his employment, in which case the employer has the right; or
the person that created the design is under a contract with another person, in which case it is the other person that has the right.
a person who derives title to the design;
a person who would, on registration of the design, have the exclusive right in the design assigned to that person.

The right to register a registrable design can be lost if the design is published prior to registration.

The exclusive right for a design must be registered and is of much shorter duration than the copyright protection for software programs. Design right registration only last for a period of 5 years, with a possibility to extend the registration for a further 5 years. There are a number of overlaps between the protections that are available to a particular work as “design” under the Designs Act 2003 (Cth) and/or under copyright law under the provisions of the Copyright Act 1968 (Cth). In addition there are overlaps between copyright and trade mark law. These areas of overlap are a particularly complex area of law and you should seek specific legal advice if you believe any of the issues apply in your circumstances. There is more information on these intellectual property rights on AIIA.biz under Patents, Trademarks and IP.

A Design Services Agreement is available for purchase on AIIA.biz.

WEBSITE DEVELOPMENT AGREEMENTS

There are particular issues associated with the development of websites which do not arise in more straightforward consulting services agreements. This is because websites typically contain a series of different types of intellectual property which are often sourced from multiple providers. Where the website developer incorporates different items of intellectual property into the website, it is necessary to ensure that each of these items of intellectual property is properly licensed to the customer. Usually, this means that the website developer acquires a licence to the particular item of intellectual property and then grants a sub-licence of that intellectual property to the customer. An alternative is that the customer acquires the intellectual property rights directly from the original owner of the intellectual property right (either directly or by appointing the ICT Supplier as the agent of the customer) and the customer then permits the website developer to incorporate that intellectual property into the website. Given the number and different types of intellectual property associated with a website, this is a particularly complex issue.

The usual types of intellectual property that needs to be dealt with include:

1. The Narrative

Usually the narrative is written by the customer and so there should be no difficulty with this from an intellectual property right perspective.

2. Photographs

It is common for photographs to be incorporated into websites. Where this occurs it is necessary for the owner of the intellectual property rights in that photograph to either assign the intellectual property in the photo, or at least grant a licence for the use of the photo in the website. Indeed, there are websites dedicated to providing “stock photos” which are designed to facilitate the selection of photographs for incorporation into websites and other marketing materials. Particular care should be taken as to what rights are associated with using these stock photos.

3. Maps

It is common for a website to incorporate a map showing the locations of the customer’s offices. There are a number of maps on the internet that can be used for this purpose. Many of the websites which include mapping capabilities will allow the use of their maps in certain non-commercial ways. However, where a map is being used on a website then it is likely that this usage will require consent from, and/or payment to, the owner of the copyright in the map.

4. Shopping carts and other third party plug-in products e.g. SSL certificates

There are a number of third party products which are readily available and specifically designed to be used in websites to provide shopping cart functionality. These software programs are a useful tool and can be readily built into other websites. They are, however, likely to be subject to licensing terms and payment of licence fees.

Other issues that are common in Website Development Agreements

One of the key issues in any website development agreement is that the customer has a critical role in the development of a website, especially in respect of:

writing the content that will be included on each page;
agreeing the look and feel’ of the website;
sourcing and/or agreeing to the inclusion of photographs, maps, video clips etc;
site navigation.

All of these items are take a significant amount of time, cause unexpected delays and may require the input of more ‘stakeholders’ that the person that originally instructed the ICT supplier to develop the website. All these items are highly ‘personal’ and can cause arguments between the customer and the ICT supplier as to ‘whose’ fault it is that something is not how the customer requires it.

A Website Development Agreement is available for purchase on AIIA.biz.

Next, learn about Key Commercial Issues for Consulting and Development Agreements.

Consulting Business Models Acceptance Testing Legal protection for Software and Documentation Specialist Consulting Agreements Key Commercial Issues for Consulting & Development Tips to Make Money

Master Time & Materials Consulting Agreement Fixed Price Software Development Agreement Master Design Services Agreement Master Website Development Agreement Contractor Agreement (for sell through)

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