Why intellectual property matters for B2B contracts, marketing campaigns and more

Published May 6, 2021, 10 a.m. by Lara McCoy

Buildings from below
Spoon Helsinki’s Lara McCoy spoke to Tony Sebro, Deputy General Counsel at the Wikimedia Foundation, about the importance of IP in encouraging R&D, its role in B2B relationships and why it matters even in marketing and communications

Why is it important for IP rights to be specified in B2B contracts? How does it affect the contract's value?

Both parties in a B2B relationship benefit when the relationship's terms are unambiguous. B2B relationships can include the provision of products and/or services based on intellectual property, and both the provider and the recipient should have a clear understanding about how any associated intellectual property rights are to be handled going forward. 

In particular, ownership of new IP created during the B2B relationship can be a major negotiating point in a B2B contract. A provider may want to retain ownership of any IP they create when providing services or products to a client, in order to reuse that IP in future engagements with other clients. The client may prefer exclusive control over that IP. How the parties come to terms around IP ownership will likely impact the contract value. 

How does IP impact marketing and communications campaigns? Are there any communications assets that could be considered IP? If the campaign is produced with an external partner, who controls the IP?

Marketing and communications campaigns usually consist of creative written, audio, or video materials, which are all protectable as copyrighted works. Campaigns also promote a brand associated with a product and/or service provider, or the products/services themselves. Brands are protectable as trademarks. 

Ownership of copyrights created in service of a campaign can be held by the client, or by the external partner, depending on the nature of the contract. Trademarks are typically retained by the client. 

What role does IP play in encouraging R&D?

"Intellectual property" is an umbrella term describing multiple types of intangible assets, e.g., patents, copyrights, trademarks, and trade secrets. Patents, in particular, provide inventors with a limited monopoly over their inventions, in exchange for disclosing to the public how their inventions work. This monopoly often provides an incentive for investing in innovation, as inventors can use the patent system to protect their R&D investment. 

However, innovation in some sectors, e.g., the software sector, moves at a pace that makes the patent application process an unwieldy tool for protecting innovation. Moreover, invention disclosures in software patents are rarely as useful to the public as patents in other subject matter areas might be. Instead, some companies rely on keeping their source code – the "human readable" version of their software – a trade secret, and only distributing the machine readable version. Others license their source code to the public as open source, which allows third parties to use, modify, and distribute both the original code and their modifications. Both models can be used to spur innovation and R&D. The trade secret approach gives the code’s owner greater control to innovate and maintain their code, if they so choose. The open source approach allows multiple contributors to improve and build innovations on top of the code.   

How does a multinational company protect its IP across borders? Are there international conventions covering IP?

Hundreds of countries share baseline provisions and legal concepts relating to patents, copyrights, and trademarks. Multinational companies often take the necessary steps to register ownership of their IP assets in multiple jurisdictions. Their commercial agreements should reflect their IP strategy, and their strategic interests in specific markets.