18 months ago a close friend approached me, (I'm a professional graphic designer) about her idea of starting a local women’s entrepreneurial group. I was enthusiastic and supportive and after several more discussions (while we ran our 4m loop), I came up with the name “Arlington Women Entrepreneurs”- we’d call it awe! for short. I designed a logo, put up a basic wordpress website and maintained it for 14 months, photographed monthly meetings for social media postings and for the site - all told about 120 hours worth of work. I would frequently have meetings with my friend but of course, never got a contract spelling out my role in the organization, and stupidly made the assumption that when it became legit (whatever that means) I would begin to receive remuneration of some sort or have a role in it's direction.
The group has taken off and she is dedicating herself to it full time. In the meantime she is investigating opening up other chapters and possibly getting either a nonprofit designation or some other business structure. She has also hired an amateur designer to help her with social media. When I told her the art getting created was not of a professional quality, she informed me I was not a partner and to butt out essentially.
Yesterday I trademarked the name Arlington Women Entrepreneurs and the logo mark. At this point I’d like to proceed with getting a contract written that spells out that I will be paid henceforth and that if she wants to continue to use the logo and name, I’d need to be paid. Also if other chapters will be using the logo image, (she is coming up with another “A” name since obviously it can’t be Arlington ie: Awesome Women Entrepreneurs) I need to be paid each time a new chapter is formed. I've never drawn up a contract like this and not sure where to start. I also don’t want to come off as snarky about the whole thing but professional and matter of fact-that I was kind enough to assist her in getting started for 18 months but that now, I would like a return on my investment. We’re still friends and I’d like to keep it that way. She has asked me to give her a quote on increasing the capabilities of the website so ideally, I'd like to roll the other aforementioned fees into the quote to make it realistic that she can pay me in a reasonable way as the business grows.
For clarification. If I understand correctly, this is the womans business and you currently own the logo/word mark?
For starters. If you filed the mark yesterday. You still do not own it officially. There is a long process of showing proof of use and paying the government fees. If you were my creative and squatted on the mark, I would take offence. There are other ways to extend your services that you should consider before this tactic. I know that might not directly answer your question. But, she is a non-profit and it might be best way to cut ties off and prospect new clients. On the other hand - if you need a stash of proposals, i used to own a creative agency to send and help you get started.
You really should hire a lawyer to help you prepare a contract like that, as well as to help you sort through what intellectual property you own and do not own. While you say you just trademarked the logo, you likely do not have any trademark rights in the logo. Trademark rights arise from the use of a trademark, not the design/creation of the mark. The organization therefore likely owns the trademark rights (since it's the one that's been using it), and an application to register the logo in your name with the USPTO (which I'm guessing is what you've done) is probably invalid.
If you created the logo and haven't signed any written agreement regarding copyright ownership, however, then you likely do own the copyright in the logo design. Same thing with the website. But there's also a good chance that a court would find that you gave an "implied license" to the organization to use the logo and website under copyright law, regardless of whether you were promised some kind of compensation or benefit in return.
In short, I'm afraid you've already made a few mistakes legally, and trying to prepare your own contract would just compound things. I know the DC area lawyers are very expensive, so you might want to look in other metro areas of Virginia like Richmond or Roanoke. Just look for someone that practices trademark and copyright law on a regular basis. I'm happy to have a call with you to explain a bit more and help guide you with finding a lawyer in your area.
In my opinion...the good news is that you probably do have some rights to the mark or at least could hold up anyone else using it for a long time. The bad news is you haven't won the lottery. It is not bound to bring you lots of money.
My opinion is that you should talk it over with the owner of the organization and tell him/her what you would like. If you have a disagreement, express your desire to be friends but that you want to be treated fairly. Maybe, equity is what you prefer. Think positively and work it out. Then start a business based on the success of what you did. Get the owner to spread your name and expertise as part of the deal.
Best of Luck,
Mike
From the Trenches to the Towers Marketing
I will be glad to help as my time permits.
