[E-trademarks] Proper applicant when client is under Model A fiscal sponsorship

Thu Nov 14 22:56:31 UTC 2024

Jessica,

I had a similar situation in the sense that my client had a fiduciary sponsor – but the sponsor had no control over anything but the finances and provided the tax-exempt status. I’m surprised that your clients actually are getting paid by the sponsor since both sides are non-profit and your client is a start-up. In my case there was no question that the client owned the IP and no one was getting paid.

I think job descriptions will be key. If not that, then the sponsorship agreement itself should provide guidance.

Best,
Miriam

Miriam Richter, Attorney at Law, P.L.
Make Your Mark! ®
Trademark, Copyright, and other Intellectual Property Matters
2312 Wilton Drive, Suite 9
Wilton Manors, Florida 33305

954-977-4711 office
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Jessica R. Friedman via E-trademarks
Sent: Thursday, November 14, 2024 5:15 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com>
Subject: Re: [E-trademarks] Proper applicant when client is under Model A fiscal sponsorship

Thanks, Sam, for your detailed response. I am actually already trying to find out if my client’s people have job descriptions so that I can ascertain whether the works were created in the scope of their employment.  But since they are being sponsored to enable them to keep doing what they were doing before the sponsor got involved, even without a job description, I think the answer might be yes.

But also, as you say, it appears that the group did bring their own IP to the table, using the name for their podcasts before the sponsor got involved. And if that’s the case, then absent an assignment of the trademark, the members of the group would still own it.

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Sam Castree via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Date: Thursday, November 14, 2024 at 4:49 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto:sam at castreelaw.com>>
Subject: Re: [E-trademarks] Proper applicant when client is under Model A fiscal sponsorship
Dear Jessica,

These are just my off-the-cuff thoughts, but I don't see anything wrong with the sponsor being the applicant.  The podcasters clearly seem to be employees of the sponsor, and so are presumably acting as agents of the sponsor in creating the podcast.  As such, those same employees can be the ones who are ensuring the quality of the goods and services on behalf of the sponsor, and so the sponsor owns the mark.

That said, I also don't see a problem with the client group bringing their own IP to the table, so to speak.  The "group" is not a separate busienss entity as such, but the clients as individuals can jointly own a mark and then continue using that mark while being under the aegis of the sponsor for financial and administrative purposes.  Although, that gets harder to support if the podcast only began after the client group got hooked up with the sponsor.  Related question, would the podcasts themselves be considered works made for hire under copyright law?  Would the sponsor think so?  That might help to inform the answer, perhaps.

I suspect that a lot of this might turn on the contract between the sponsor and the client group, the timing of when the podcast started viz à viz the client group beginning to work with the sponsor, and maybe even the relevant jurisdiction's labor laws.  But, again, just spitballing.  I look forward to hearing from others with better ideas.  It's certainly an interesting bit of puzzle.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

On Thu, Nov 14, 2024 at 2:53 PM Jessica R. Friedman via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

  *   I represent a group that produces podcasts under a Model A fiscal sponsorship and wants to register its name. A fiscal sponsor is a nonprofit organization that provides fiduciary oversight, financial management, and other administrative services to charitable start-up operations.

  *   Under Model A, the group being sponsored becomes part of the sponsor company; it doesn’t form its own corporate entity. So, the two people who work for my client’s group receive salaries on a W-2 from the sponsor entity, and the sponsor has to sign all contracts that the group wants to enter into. But the sponsor entity has no input into or right of approval over the podcast content or any other aspect of the actual podcast services.

  *   Who is the proper trademark applicant: the sponsor entity or the individual members of the group? It seems to me that as long as the members of the group are employees of the sponsor, the sponsor entity has to be the trademark applicant, but since the sponsor itself has nothing to do with the quality of the podcasts, this just seems wrong.

  *   Has anyone had experience with this situation, or does anyone else have any thoughts?

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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