CHAPTER 4
Parties to IP Rights, Part I: Owner, Consumer, Authorized User, Licensee, Attorney occur between the owner of the rights (who may be, but is not necessarily, the creator or inventor) and another party. The identity of the other party depends on the type of transaction. The owner may sell copies of the IP created to other traders in the industry or the public at large, all of whom are considered consumers of the IP. The owner may also sell, exchange, license, or otherwise transfer the IP rights themselves to another party. If the owner transfers the ownership rights in the IP entirely, there is a new owner. The transfer transaction is usually in the form of an assignment, and the former owner is called an assignor while the new owner is an assignee. If the owner transfers rights to use the IP only, the arrangement is referred to as a license, and the owner is then a licensor while the other party is a licensee or authorized user. When IP rights are transferred in part or in whole, the parties to the transaction should seek legal advice, particularly if the transaction is cross-border.
COMMERCIAL TRANSACTIONS INVOLVING IP RIGHTS
Owner/Creator THE OWNER AS CREATOR
A creator generates IP, whether in the form of material that can be patented, copyrighted, trademarked, or simply protected as trade dress, trade secrets, or otherwise. The creator may be, for example, an inventor, artist, author, playwright, songwriter, musician, performer, sports figure, or movie producer. In any event, as a creator you are at the beginning of the chain of IP rights. Without your creation, no IP rights would exist. Unless and until you give away your rights, you own them. Two or more parties who have contributed to a creation and its form of expression are co-creators, and they can obtain joint ownership. Joint ownership usually results in each party holding an equal share, unless the parties have agreed by contract otherwise. In the absence of contractual provisions, each coauthor may use the IP without the permission of the others, but each must also account to all of the other owners and must equally share the profits derived from the IP. THE OWNER AS EMPLOYER OF THE CREATOR
If you are employed for purposes of generating IP for the use of an employer, you usually give up all ownership rights in the IP to the employer. Similarly, if you are employed as a freelance or independent contractor, the employer commonly owns the rights to the IP created. An exception may be made by your
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