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Recommendation to Authorize the City Attorney to 1) Execute an Intellectual Property Transfer Agreement with Seth Hamlin, Assigning Intellectual Property Rights in the City’s Anchor Logo and the Library Logo from Hamlin to the City in Exchange for the Payment of $100 to Hamlin, and 2) Seek Additional Intellectual Property Protections for Such Logos. (City Attorney 10023040)
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To: Honorable Mayor and Members of the City Council
From: Yibin Shen, City Attorney
EXECUTIVE SUMMARY
Since 2017, the City of Alameda (City) has widely used a logo of an anchor with a heart-shape at the top and another logo for the Alameda Free Library that shows two open books hovering above water (Logos). The Logos were commissioned from Seth Hamlin, a local graphic designer. Recently, staff discovered that no formal agreement for a transfer of ownership or assignment of the intellectual property rights in the Logos was ever made, which presents potential risk that Mr. Hamlin could seek to revoke the City’s ability to continue using these Logos and seek royalties for past use. Notwithstanding Mr. Hamlin's assurance that he has no current intention to revoke or seek royalties, to remedy the above risks, the City Attorney’s Office (“CAO”), with the assistance of outside intellectual property (“IP”) special counsel, has negotiated an assignment agreement whereby Mr. Hamlin assigns IP rights associated with the Logos to the City in exchange for $100. Staff requests that the City Council authorize the City Attorney to 1) execute this IP assignment agreement, and 2) to identify and utilize any other means, including potentially seeking federal copyright protections, to further protect the City’s intellectual property rights in the Logos.
BACKGROUND
In 2017, City staff commissioned the Logos from Seth Hamlin for no charge. Use of the Logos by the City was approved by then-City Manager Jill Keimach. City Council has not reviewed or granted approval of use of the Logos. Additionally, there is no written agreement to transfer intellectual property rights for the Logos from Mr. Hamlin to the City.
Since 2017, the Logos have been widely used to represent the City in various settings, including the City’s websites, papers, presentations, social media accounts, and merchandise.
DISCUSSION
Currently, there is no formal agreement assigning intellectual property rights for the Logos from Mr. Hamlin to the City. Therefore, the City likely only possesses a revocable implied or oral license from Mr. Hamlin for use of the Logos. If Mr. Hamlin attempted to revoke the City’s right to use the Logos, the City may be required to immediately cease use of the Logos, i.e., removing the logo from all pages on the City’s website, all City documents and publications, and City merchandise. Additionally, Mr. Hamlin potentially has the legal right to demand the City pay him royalties for prior use of the Logos. Mr. Hamlin has assured staff that he has no present intention to revoke the City’s right to use the Logos or seek past royalties.
Notwithstanding Mr. Hamlin’s assurances, to mitigate against the above identified risks, the CAO, with the assistance of outside IP special counsel, has negotiated an assignment agreement whereby Mr. Hamlin formally assigns IP rights associated with the Logos to the City in exchange for $100. While Mr. Hamlin did not demand compensation from the City, for the assignment to be legally valid Mr. Hamlin must be compensated. Accordingly, Mr. Hamlin has agreed to accept $100.00 (One-Hundred Dollars) from the City as compensation for the assignment. Finally, because the assignment is not being made contemporaneously with the City’s initial commission/use of the Logos, federal law may permit Mr. Hamlin to revoke this assignment of rights in the Logos to the City after 35 years. See 17 U.S.C. § 203(a)(3).
In addition to the recommended IP assignment agreement, staff further recommends that City Council authorize the City Attorney to identify and utilize any other means, including potentially seeking federal copyright protections, to further protect the City’s newly acquired intellectual property rights in the Logos.
ALTERNATIVES
• City Council may decline to authorize the IP Assignment Agreement and instead direct staff to continue use of the Logos in light of Mr. Hamlin’s assurance that he does not intend to revoke or seek past royalties. This approach may expose the City to the IP risks described above.
• City Council may choose to cease all use of the Logos and remove all instances of the Logos from City websites, social media accounts, presentations, publications, and merchandise, and direct staff to commission new logos, subject to future City Council approval.
FINANCIAL IMPACT
There are existing funds within the City Attorney’s Office’s transactional legal services line item to support this IP Assignment Agreement. The same budget line item will be used to support the additional efforts to acquire intellectual property protections, if directed by the Council.
MUNICIPAL CODE/POLICY DOCUMENT CROSS REFERENCE
This is consistent with Alameda Municipal Code Section 2-59.3(a).
ENVIRONMENTAL REVIEW
This action does not constitute a “project” as defined in California Environmental Quality Act (CEQA) Guidelines Section 15378 and therefore no further CEQA analysis is required.
CLIMATE IMPACT
There are no identifiable climate impacts or climate action opportunities associated with the subject of this report.
RECOMMENDATION
Authorize the City Attorney to 1) execute an Intellectual Property Transfer Agreement with Seth Hamlin, assigning Intellectual Property Rights in the City’s Ancher Logo and the Library Logo from Hamlin to the City in exchange for the payment of $100 to Hamlin, and 2) seek additional intellectual property protections for such Logos.
Respectfully submitted,
Doug McManaway, Deputy City Attorney
Financial Impact section reviewed,
Margaret O’Brien, Finance Director
Exhibit:
1. Long-Form Intellectual Property Assignment Agreement