Copyright owners have a bundle of exclusive rights that include the right to publish, copy, distribute, display, perform, and the create derivative works based on the original work. When giving another person permission to do any of those things with your work, you need a license or assignment agreement.
Having the proper type of agreement in place will ensure that your intentions are met in terms of who will maintain ownership over your copyright and what exact rights in your bundle of rights you’ll be permitting the other party to have.
With a copyright assignment, you are contracting to give someone else your entire copyright. Upon execution of the agreement, the ownership of the copyright will transfer from one party to another.
Once you assign your copyright, you may not publish your work even if you were the original author.
Assignment with Reversion
A newer type of assignment is an assignment with reversion. A reversion is a future right to own the copyright. Thus, the copyright will be granted to another person, who owns the copyright for a period of time or until a condition is met, and then the copyright reverts back to the original owner. In some cases, the original owner will have to pay for the reassigning of the copyright.
If you want to maintain ownership of the copyright, a license is a better option. With a license, you’ll be maintaining ownership, while granting permission for another party to use your work in a particular way.
It’s very important to carve out the scope of the permitted use carefully to ensure that you’re not granting an over-inclusive set of rights.
Other important considerations are the license’s exclusivity, duration and payment terms. Parties may negotiate for whether the license is exclusive, meaning that the licensee will be the only person afforded those rights and the licensor will not grant these rights to anyone else, or whether the license is non-exclusive, meaning that the licensee is not the only person or entity being granted the particular rights. The license agreement’s duration shall be clearly provided, including both parties’ rights to terminate. Finally, how the licensor will be paid for the granting of the license shall be laid out.
Assignments and Licensing Agreements should be drafted by an attorney to ensure that existing and future rights are protected, while keeping in mind the overall business objectives and creative pursuits. If you are thinking about signing a license or assignment, please consult with an attorney to make sure you understand every provision and the agreement as a whole.
If you would like help reviewing or drafting an Assignment or Licensing Agreement, or if you have genera questions about the topic, please do not hesitate to give us a call at 650-271-9395, or email us at firstname.lastname@example.org.
Written By: Melissa Hong
Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.