Don’t Let Your Designs Walk Out the Door

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For many businesses, their design plans, specifications, pricing formulas, or marketing materials, are truly its lifeblood. But what happens if a designer leaves your firm and uses them to promote a new venture or pad their portfolio? As a solicitor, I’ve seen this scenario spark legal disputes. Who actually owns those designs? The answer can mean the difference between a smooth transition and a legal battle.

Intellectual Property (IP) can represent significant creative effort and value to a company. Under UK law, if an employee creates such a design as part of their job, the employer is usually the first owner of its copyright. In other words, the business – not the individual designer – holds the rights to works created during employment (unless a contract says otherwise). This applies to any creative work produced on the job by an employee. The situation will be different where IP is created by a consultant or freelancer, with ownership not transferring automatically. In such cases it is advisable to have robust terms agreed which adequately deals with IP rights and ownership before the consultant is engaged and work is commenced.

In Penhallurick v MD5 [2021], an employee claimed ownership of software he had partly developed at home outside of work hours. The Appellant Court disagreed, ruling the employer owned the work as it was created in the course of employment. Even though that case was about software, the same reasoning applies: if a design was created during the course of employment, the law treats it as your company’s property. Knowing the law is on your side is reassuring, but prevention is better than a cure. A few practical measures can save a lot of headaches down the line:

Use clear IP clauses in contracts: Every employment contract should explicitly state that all designs and creative works produced during employment belong to the company.
Include confidentiality terms: Protect design files and project information with non-disclosure clauses, making clear that designs can’t be used outside the business without permission.
Plan for portfolio use: Consider a policy allowing ex-employees to use select works in their portfolio with written permission and proper credit. Setting this expectation in advance can prevent disputes and maintain goodwill.
Secure assets on departure: Have an exit checklist to recover all company assets and data: collect company devices/files, cut off access to design software, and remind the employee of ongoing confidentiality and IP obligations.

Despite your precautions, you might still find a former employee displaying your designs on their new business website or in marketing materials. If that happens, act swiftly to assert your rights. Politely but firmly remind them that those materials are company property and request immediate removal. Often a solicitor’s cease-and-desist letter will resolve the issue. If that proves unsuccessful, you can seek an injunction or file a copyright infringement claim to enforce your rights. Ultimately, protecting your designs comes down to foresight and solid policies. By laying the legal groundwork while relations are good, you can ensure your company’s creative assets stay safely with you – even when talented designers branch out on their own.