Does Not-for-Profit Own Teachers' Courses?

We are a not for profit that has several courses and workshops developed by teachers who are contractors. We want to publish the courseware online. What is required to be clear that the IP is owned by our organization not the teacher? They were paid for developing the materials. Absent an agreement to the contrary, a contractor acquires copyright in works created for someone else. (Check our previous entry, Who Owns What I Write For NonProfit?) So if your non-profit wants to reproduce copyrighted materials, you'll need to have an agreement in place. You may have already signed such an agreement, or you can go back now and seek either an assignment or a license, both discussed below.
Acquiring ownership of contractor works. Your non-profit will own the copyright in the coursework (and not have to seek permission) if the contractor signed a work for hire agreement at the time the materials were prepared. Alternatively, you and the contractor might have signed an agreement containing an assignment provision -- an arrangement that says something to the effect of, "I assign all copyright in the work I created to the not-for-profit." Either of these arrangements allow the non-profit, as copyright owner, to freely exploit the materials including publish them online. Although it is probably too late to execute a work made for hire --  such agreements should be made in anticipation of the completed work -- the contractor can execute an assignment at any time.
License it. Even if the non-profit doesn't own copyright and can't acquire ownership via an assignment,  the nonprofit may have acquired a nonexclusive implied license to reproduce the materials for their intended purpose. That is, if you hired the teachers to create course materials and the teachers were aware of your intention to publish the materials online, you would still have an implied license to publish the materials online. The drawback to an implied license is that it is nonexclusive and the teacher can offer the course materials to others, as well. In that case, you can still achieve your goal by executing an exclusive license for the rights you want. You can find sample agreement for most of the purposes discussed above in our Getting Permission book.

Needs Music Producer Agreement

Dear Rich: I have your Music Law book but it doesn't contain an agreement that can be used with a music producer. I am an artist and need a producer agreement. There are a few music producer agreements floating around the interweb but before you start downloading, keep in mind that these agreements come in three major flavors:

• record company/producer agreement. In this arrangement, a record company hires a producer to produce a song or an album. Even though the record company hires the producer, the payment typically comes from the artist. That is, the record company pays the producer and then later deducts that cost from the artist royalties. The royalties that are paid to the producer, often in addition to the producing fee, are also usually deducted from the artist royalty. So, for example, if the artist is getting a 15% royalty, the artist may have to pay 3 or 4% of that to the producer. This type of production agreement usually includes a few major components including: the producer assigns copyright to the label, the producer takes on some specific administrative tasks -- for example, hiring the studio or paying musicians, and the producer performs certain production tasks in terms of delivering acceptable master recordings. 
• artist/producer agreement. In this case, the artist, not a record company, hires the producer. This is a common course of action for an indie artist who wants to release music directly or wants a suitable master to shop to a record company. In this case, there may be a flat fee (say $500 per song) and no royalty payments. This type of agreement would include an assignment of all copyright to the artist, as well as a detailed listing of the producer's obligations. Typically, in this situation, the artist pays for the studio and any extra costs. 
• spec agreement - production company/artist. In this situation, a production company or producer agrees to produce a song or an album, often on spec (that is, without an upfront payment), and in return, the production company usually helps to shop the final product and obtains various future rights. These may include future royalties, part-ownership in songwriting, a percentage of any record company advances or even more, such as dibs on merchandise. 

Putting together an agreement? We're going to assume you don't need the first or the third agreements, mentioned above. Both of those are fairly complex and are usually prepared by lawyers.  You might be able to prepare an informal, enforceable version of the second type of agreement -- an agreement between an artist and a producer -- by yourself, particularly if you already know and get along with the producer. A bare-bones version would contain the following provisions: (a) an assignment of all copyright for work created, performed or produced by the producer,  (b) a schedule for payment and delivery, (c) a division of labor --  who does what and pays for what and a system for resolving disputes. Payment should be fixed (per track) and you may want to set it up to make the payment in stages based upon delivery of the tracks. You might also want to include an approval process although such provisions are tough to create and difficult to enforce. 

Realtor Wants to Assign Photo Rights

Dear Rich: I’m a Realtor and I take hundreds of photos of my listings every year and write the copy for publication. I compile the information that is then used by our local multiple listing service. I am being approached by multiple vendors I do business with wanting me to give them my copyrights to my photos and text. Is there a copyright that will cover my work as whole, both existing and future listings, without my having to file a separate copyright for each listing’s photos and text?  Just so we're clear ... You take the photos of the properties and as photographer, you own the copyright in each photo. Certain vendors want permission to use the photos, is that right? Or do they want to own all rights to the photos?
If the vendors just want copyright permission ... In that case, you can write a statement to the effect that "I own copyrights in all photos that I furnish to you and I grant you permission to reproduce the photos for your [name of site or publication] and I retain all other rights." (You can find more nuanced language in our Getting Permission book.) A license allows you to retain copyright and permits the other party to use the photos. We'd recommend that you seek a license rather than assign your rights (this article explains the difference).
If they want to own all rights ... In that case, you need to assign your rights in each photo. When you do that, you won't retain anything. You would do that with a statement with each photo or batch of photos that you furnish. It would be something to the effect of "I assign all copyright in the following photos: [list the photos by the property addresses] to you." Of course you might want something a little more formal. This statement can be by email as long as you follow the rules shown here. If you assign, you can't reproduce the images yourself unless you get permission from the new owner.
Do you need to file a copyright application? No. Copyright is automatic in the U.S. and you get it once you click the shutter on your camera. Registration, though recommended, is a formality that provides certain legal benefits. You don't have to register copyright to license or assign your rights.

How Do I Protect My Doll?

Dear Rich: I am the author of a childrens' book about a little girl. Per my requst, my illustrator made a doll that looks exactly like the character in my book. This book is the first in a series, by the way. My question is this: Do we need to obtain a trademark or copyright on the doll? I want to use the doll when I read the book at various places (it is a picture book for children ages 5 through 8). I have tried to research this myself, but it is confusing. Speaking of confusing, we're not sure what to make of the Bitty Baby doll and its accompanying diaper bag. Do other dolls come with their own doll? Is this the right message to send children about overpopulation? Is it the right name for a doll? We guess we'll never know.
Right, you had a question. Yes, you can protect your doll under copyright law. You can file an application electronically or by using the Form CO (PDF). You would register it as a work of the visual arts. Circular 40 explain the rules.
Did the illustrator assign rights to you? According to your question, the illustrator created your doll. That might make the illustrator the copyright owner. If you and the illustrator jointly developed the doll, you may be co-authors. In any case, it's probably in your best interest to get an assignment of copyright from the illustrator. (This Artist's eGuide includes one).
What about trademarks? You can register your doll's name with the USPTO. But you don't get federal rights until you've started selling the doll (although you can reserve rights). If money is tight -- trademark registration costs approximately $300 -- you can wait until sales from the doll justify filing the application.

No Payment for Assignment

Dear Rich: I assigned my copyright for a software app and was supposed to receive half the money up front and the other half within six weeks.  It's been four months and all I get from the company are promises. Can I revoke the assignment and assign it somewhere else? That depends on the agreement, as well as the state law that is used to interpret it. We think you're in a tough spot because revoking assignments requires dealing with issues like those raised in this recent Dear Rich response.
As a General Rule Dept. Signing an assignment for the “promise” of future payments always involves a risk. We used to have a client whose golden rules were, "Get as much as you can before signing the deal," and "Don't give any money back." One reason to get the money upfront is that if the assignee (the person who owes you the money) fails to pay you, you may be trapped in dispute resolution, fighting to get your copyright back. If the assignee insists on a series of payments, there are several solutions, such as establishing an escrow account, transferring partial assignments per payment, or setting up a license agreement that allows for ownership transfer after the final payment. This is a situation where you should consider contacting an attorney (and we hope your assignment agreement has an attorney fees provision).

Should Spouse Sign Invention Assignment?

Dear Rich: I am working with a co-inventor and we're getting ready to assign our patent rights to a company that we created (incorporated in California). The co-inventor is married and so am I. Do we need to have our spouses to sign the assignment as well? Congratulations on doing the right thing -- that is creating an entity and transferring your patent rights to it. Many people proceed informally and fail to properly assign their rights. Don't forget to record your assignments with the USPTO.
Right you had a question. Legal title to an invention is a matter of state law, not federal law. In California, if you filed your patent at the time you were married, a court will presume that your spouse shares an undivided half of your interest (that is, your spouse is co-owner of legal title to the patent). That rule was confirmed in a recent case. To avoid confusion and to be assured that your assign­ment is complete (and your spouse will not later dispute the assignment), you should include a provision in your assignment similar to the one below. This provision protects the assignee (person acquiring the rights to the invention) from later being sued by the spouse of the inventor.  When used in assignments, it usually appears below the signature line for the inventor. (BTW, this provision is not required in license agreements.)
Sample Provision for Spousal Assignment

I am the spouse of Assignor and I acknowledge that I have read and understand this Assignment agreement. I am aware that my spouse agrees to assign his/her interest in the Invention, including any community property interest or other equitable property interest that I may have in it. I consent to the assignment and agree that my interest, if any, in the Invention is subject to the provisions of this Agreement. I will take no action to hinder the Agreement or the underlying assignment of rights.

Spouse’s signature

Assigned RIghts to Employer; Now Wants Them Back

Dear Rich: I did contractor work for a software company and assigned them rights to a program I created back in 2004. In return I got royalty payments for a while and now the company has stopped marketing the software. Is there a way for me to get the rights back to the software without causing a big problem? Okay, we're imagining the two guys shaking hands in the photo are you and your employer after reaching some kind of solution (the guy in the blue shirt is from the Dear Rich Staff). We hope this isn't just wishful thinking on our part because assignments are permanent transfers of ownership and few companies are inclined to return rights after they've paid for them (Just ask Simon & Schuster). We're also not clear what type of assignment you made (you can review the various types here). Three possible ways of getting the rights back include:

• The company gives the rights back voluntarily. If you are still on good terms with the company, it's possible they may work something out with you. They may even allow you to exploit the software in return for a cut of your profits. Or perhaps they'll simply sell it back at a reduced price. You won't know until you ask. And whatever you agree upon, get it in writing, of course.
• The agreement you signed provides for some method of reversion.  Occasionally, an assignment provides for reversion of rights. This is rare because assignments, by their nature, are permanent transfers. But occasionally, a patent or a copyright assignment permits the assignor to re-acquire rights if certain conditions are met -- for example, the assignee stops exploiting the work, or the assignor buys it back for an agreed-upon fee. In any case, you should review the agreement in case it does include a reversion provision. (By the way, there may be confusing tax implications if an assignor reclaims rights after categorizing the assignment payment as capital gains and not as ordinary income.)
• The employer breached the assignment agreement and you can use that breach as the basis for terminating the assignment. We're not sure if you're ready for this approach as it usually involves litigation, but if you can prove a material breach of the assignment agreement,  the rights may be re-assigned to you. You're most likely to achieve this outcome if you can demonstrate that the company induced you to enter the agreement based on fraud. You may also be able to argue that the company materially breached the agreement and failed to cure the breach -- for example, never paid royalties or provided accountings. But this is a tough strategy to implement because a court faced with a failure to pay royalties may allow the company to retain the ownership, provided that damages are paid to the assignor (you).

Keep in mind that if you do get the rights back, you'll also need the cooperation of the company in registering the assignment (whether it is copyright or patent rights) and in transferring rights back to you. 

What's a Reasonable Assignment Provision?

Dear Rich: The other day you criticized a contract clause that a developer sent you because the clause claimed rights to the developer's own software tools. Can you give an example of a clause that wouldn't do that? We usually don't like it when someone responds to a question by saying "Good question." It seems gratuitous and a bit of a stalling tactic, doesn't it? It reminds us of our grandfather (left) who could hear okay but whenever you asked him a hard question, he made you repeat it so that he would have more time to answer.
Right, you had a question.  Flakasoft, one of our favorite app developers, responded to our recent work-for-hire entry and sent us a contract they had just received. It included the following provision.

Ownership of Inventions. To the extent that, in the course of providing the Services, Consultant jointly or solely conceives, develops, or reduces to practice any inventions, original works of authorship, developments, concepts, know-how, improvements or trade secrets, whether or not patentable or registrable under copyright or similar laws (collectively, “Company Inventions”), Consultant hereby assigns all rights, titles and interest to such Company Inventions to the Company. “Company Inventions” shall not include any software, owned or developed by, or licensed to Consultant, or methodologies, techniques, software libraries, tools, algorithms, materials, products, ideas, designs, and know-how (including all copies, enhancements, modifications, revisions, and derivative works of any of the foregoing) that existed prior to the date hereof or are acquired by Consultant from a third party thereafter or developed independently and outside the scope of this Agreement.

It's possible to draft a more specific or more favorable clause for protecting developer tools but this will give you a basic idea of what could work in terms of turf protection and fairness. And thanks for the good question!