I had some tiles made from my original art. I have asked that the tile maker give me the molds or sell me the molds. His response is that the molds are his and he has every right to make tiles for others from them and sell them. He has told me that now that my art is in tile form there is enough "distortion" to make the art his. I believe I commissioned him to make tiles from my art and the molds are mine.
State/Country relating to question: Washington
I offered to purchase the molds or templates, to get a written agreement that he won't use my molds or designs in his other works. He refuses.
I hope this message finds you well, present circumstances excluded. The tiles and the intellectual property relative to the tiles are legally yours because, as you correctly point out, commissioned him to do this work based on your original work of art. In the intellectual property world, when a work is commissioned, unless specifically specified otherwise via contract, the intellectual property developed from the work belongs to the person that commissioned the work in the first place.
The fact that you commissioned work that would revolve around your previous generated and owned intellectual property only further proves your opinion and legal stance.
I would urge you, for record purposes in case litigation ever ensues, to send him a certified letter with a return receipt in which you respectfully XXXXX XXXXX the plates and particularly point out that legally they are yours because you commissioned the work. You may even want to offer to pay him a reasonable fee, as you have previously done. If so, point out that you are not required to do this.
You will also want to point out that he has not claim to the property even apart from your original art because you commissioned the work.
Ask him to respond to you in writing within a reasonable amount of time (like 10 business days) with his decision.
Tell him that you have conversed with an IP attorney (which is now true) and that you are prepared to take legal action if necessary.
In summary, your position is correct and you need to put him on notice in formalized fashion. The certified letter will function as evidence of your attempts at being reasonable if you have to take him to court over this issue at a later date.
Patent Bar Certified
Thank you for your response. I have sent him a certified letter, two days ago and given him 2 weeks to drop the templates at a neutral location, an art studio in town. I did stipulate that unless this was done I would take legal measures.
Fantastic! He has no legal grounds to stand on from any angle. Even if you simply commissioned the plates without your original work, they would still be yours because you commissioned the work.
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