OVERVIEW OF INTELLECTUAL PROPERTY CONTRACTS
BASIC INFORMATION ABOUT NONDISCLOSURE AGREEMENTS
A nondisclosure agreement is a contract between an owner of confidential or proprietary information and a person to whom the information is disclosed. An effective NDA should create a legal obligation to keep the information secret, and may provide for penalties in the event of disclosure.
NDAs can be either “mutual” or “one-way.” A mutual NDA covers two parties that are exchanging confidential information. For example, a small business might need to disclose a secret formula to a manufacturing company for production, and the manufacturing company might employ a production process it would like to keep secret as well. A one-way NDA is used when a disclosure is made by only one party, such as when an employee gains access to proprietary information during the course of employment and the employer wishes to prevent the employee from disclosing the information to third parties.
BASIC INFORMATION ABOUT LICENSING AGREEMENTS
A licensing agreement is a written contract entered into between the owner of a copyright, patent, trademark, or other intellectual property (called the “licensor”) and another party (called the “licensee”) to use, make, or sell copies of the subject matter of the license. The subject matter of licensing agreements can be as varied as sound recordings, characters from a film or book, a trademarked logo, or a patented industrial process.
Licensing agreements can be either exclusive or nonexclusive. Under an exclusive licensing agreement, only the licensee has the right to use, make, or sell the licensed property. Nonexclusive licensing agreements allow rights to be granted to potentially multiple licensees. A key provision of a licensing agreement from the licensee’s perspective is the scope of rights granted under the license. For instance, the licensor of a copyrighted character from a movie may not be willing to give a toy manufacturer-licensee the entire bundle of rights in the character, and therefore might only grant the right to reproduce, distribute, and publicly display copies of the character, but not to create a derivative work from the character. Key provisions from a licensor’s perspective can include the amount of royalties, duration of the license, or territorial restrictions on the rights granted.
BASIC INFORMATION ABOUT IP COLLABORATION AGREEMENTS
Collaboration agreements can be contracts such as those between two parties engaging in the creation of a work of joint authorship under copyright law. Another form of collaboration agreement, a session musician performance agreement, may be necessary when a band or record company hires a musician to perform on a studio recording. In both situations, the rights that each party will have to the end product must be clearly defined, whether it be a collection of songs jointly authored by two songwriters or a band’s sound recording featuring a studio musician’s sax solo. Disagreements can and do arise between parties over rights to the end product if they fail to enter into a collaboration agreement.
Although most collaboration agreements will have some of the same core provisions, many collaborative situations may not be adequately addressed by the cookie-cutter solutions available from online legal forms providers where legal advice is not offered with document assembly. The firm has worked with artists, musicians, songwriters, and record label owners on a wide variety of collaboration agreements, and will craft a customized agreement after your consultation.
