Sometimes clients reveal to me they are keeping an IP trump card in their back pocket.
That logo that her husband designed for the celebrity she manages… she’s aware that her husband was in no contractual relationship with the celebrity and therefore there was no written document assigning the copyright in the logo. Her husband still owns the copyright. But, she’s not going to raise it with the celebrity, as she might need the leverage one day, if the celebrity ever decides to terminate her management contract or stiff her on her commission.
Or, that domain that that he registered in his name when he first started out, which is used by the company without any formal licence agreement in place, because the company doesn’t actually realise it doesn’t own the domain name. He gets no royalties, but he gets leverage, because the company needs the domain name. So, if push comes to shove and the fellow directors and shareholders that he has taken on along the way, as the company has grown, try something he really doesn’t like, he has something up his sleeve: a way to fight back.
No doubt there are many other scenarios. People’s desire for security and self-preservation runs deep.
But here’s the catch with the businessman who uses the domain name as leverage (aside from a possible breach of director’s duties for not bringing the vulnerability to the board), to apply for a .com.au domain name, you must have an Australian presence and satisfy any eligibility and allocation criteria in paragraphs 2.4.3 to 2.4.11 of the .au Domain Administration Rules (and you warrant that you will continue to meet, the eligibility and allocation criteria for the duration of the Licence to the domain name). These eligibility requirements include that the .com.au domain name is owned by a commercial entity, and that there be some other nexus, such as that the domain name is a match for that entity’s business name.
So, if the businessman wants to keep his trump card, that’s ultimately his decision, not mine. But if he makes that judgement call, he needs to take appropriate steps to ensure that he doesn’t breach the au Domain Administration Rules. For example, to meet the eligibility and allocation criteria to hold that domain name, he needs to register for an ABN and register the words in the domain name (prior to .com.au) as a business name, which might be hard to do, as it is likely that the company has already taken the words in the domain name as it’s company name, or registered it as a business name, so ASIC may say the business name is not available. Still, the businessman needs to try, and if this is not an available means to meet the eligibility and allocation criteria, he needs to find another. Otherwise, he may find that his IP trump card is actually a house of cards.
