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Who owns the Intellectual Property?
Anonymous3 views4 answers
I was the sole owner of an LLC. Later when I married, my husband and I started a new 50/50 ownership corporation.in a different state but doing the same business, We have no bylaws , nor transfer documents ..only an article of incorporation. The financial assets from the first LLC were transferred from the bank account of the LLC to the corporation´s bank account but I never dissolved the original LLC. It still exists. Now we are divorcing and I want to know who owns the intellectual property. I never signed a written assignment document nor license of my copyrights to the LLC nor the new corporation. Do I personally own my copyrights? Does my first LLC,( thus me since I was sole owner)? OR does the new corporation? In each business entity I made reproductions of my original product.
It is hard to answer without knowing what copyrights are actually involved - is it the logo of the original company? Do the products that you sell have copyrights of their own? You will need to discuss with an IP attorney to understand the specifics and value of the copyrights. The next question is are they marital assests - usually considered "no" if prior to the marriage - but not sure how involved your soon to be ex was with the first LLC prior to the marriage. All these facts are important in determining an answer to your question.
Good luck.
Your question mentions "intellectual property" generally and "copyrights" specifically. However, your situation likely implicates multiple types of intellectual property, not just copyrights. For example, you company and product names and logos may be protectable trademarks; advertising material, publications, web sites, etc. may be or contain copyright protected material; and your company may also have trade secrets that should be accounted for during this process. (Patents also fall under the umbrella of intellectual property, but from your facts it does not sound like they are implicated here.)
Depending on who developed what and when, different IP may be owned by different individuals. For example, copyrights may be owned by the author or the author's company, depending on what agreements may be in place. Trademarks are usually owned by the person or entity who controls the nature and quality of the goods/services provided under the trademarks (usually a company, but may be an individual). Trade secrets also normally belong to the entity controlling the process. The nature of your business and the divorce proceedings will both impact how these IP issues are handled.
You should consult an IP attorney and evaluate each aspect of the company and related IP on its own merits. Since it sounds like common law rights are involved (e.g. rights beyond or separate from federal trademark, copyright, and patent registrations), you should look for an attorney licensed in NY (or state of your company, if different). An IP attorney can work with you and your family law attorney (or you could find a general practice firm that has attorneys in both practice areas) to sift through the various options and scenarios.
"Intellectual property" is merely a catch-all label that has no legal meaning. Under the "intellectual property" umbrella falls all sorts of property such as copyrights, trademarks, trade dress, trade names, trade secrets and other confidential information, patents, domain name registrations, and rights of publicity.
It is nonsensical to evaluate, in one fell swoop, whether the various intellectual properties owned by your LLC were assigned or otherwise conveyed to the Corporation owned in part by your husband. Like all other assets, you have to evaluate if each were properly conveyed.
For example -- a copyright may be conveyed not only by an assignment but also "by operation of law" -- which includes state law. So w/o knowing the particular circumstances of how you transferred your LLC's assets to the Corporation no one can pass on the issue or provide you with any actionable information.
Another example -- any trademarks created by your LLC and then used by the Corporation are likely Corporate assets that cannot simply be re-used by your LLC w/o paying the Corporation for that right [w/half of that payment, of course, going to your husband].
Very few family law attorneys who handle divorce know anything about intellectual property law. Your divorce attorney NEEDS to discuss this matter with an intellectual property attorney licensed to practice in NY.
Copyrights are owned by whoever created the IP, which I guess was you, IF you created the IP before you were married, so the IP would be your separate property. After you got married, if you created more IP, that might be community property, depending on what state you were in.
Reproductions of the IP would still be your separate property.
You need to see a family lawyer experienced in IP property matters.
Disclaimer: I'm only licensed in CA. Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
