Intellectual Property Advice

[DerekJohnstone]

My colleague and I developed a new training product in my current Company A before she left once it was completed. Because she was leaving I agreed to transfer the IP and the product to a new company B in which we are equal shareholders and plan to market it (seemed fair as she put a lot of work into it). She didn't want it ti remain in company A.

I recently decided to set up a webpage on Company A which talks about the development of the product and provides a new email to get in contact with us over at Company B. While I thought this would help re direct people this has attracted a lot of criticism and stated it is in breach of the IP as the product now has nothing to do with company A. It was also stated it is false advertising.

I hope to discuss this and reach an amicable positionI but I am keen to know if what I am doing is actually a breach of IP?

Any help appreciated.

 

[WaveJumper]

When you say "current company" do you mean a company you both worked for in which case your contracts may have included anything produced whilst working for them remains their property?

 

[DerekJohnstone]

When you say "current company" do you mean a company you both worked for in which case your contracts may have included anything produced whilst working for them remains their property?

Sorry we jointly owned the 'current company A' and I remain there - and she left. So the product was the ownership of company A before i agreed to move it onto company B which we are joint shareholders.

 

[eteb3]

If Company A tells people Company A developed the training product, but doesn't publish any part of the training product on the website, that's simply a fact, and I can't see how it infringes on Company B's IP.

As long as it's factually accurate, it won't be misleading advertising afaict, but you could check the ASA guidance.

I guess she may be bridling at the suggestion that "you" helped to develop it, and it was all her? If she was employed by Company A at the time, it was almost certainly produced in the course of her employment, so absent a contrary term in her employment contract the IP has always belonged to Company A and not to her (and not to you either).

An author sometimes has a moral right to have their work attributed to them: that may apply here. The moral right can't be assigned (so remains hers even if she produced the work during employment) but can be waived (check the original employment contract: a waiver clause is often standard).

IP protection is often a lot less than people think it is: the statutory stuff protecting a training course is only the company's copyright in the text/audio/video and can't extend to know-how. You can try to give a bit more protection using common law confidentiality, but it's hard to make it watertight.

HTH

 

[Solvelaw]

Is this an IP issue? Sounds like an advertising rules issue to me. The right holders may be either company depending and I doubt if they are going to take action against each other. In short who has complained to whom?