Chapter 15:ACQUIRING IP RIGHTS: JOINT COLLABORATION AGREEMENT

CHAPTER 15

Acquiring IP Rights: Joint Collaboration Agreement

WHEN TWO OR MORE INDIVIDUALS WORK TOGETHER on an invention, a book or play, a musical score, or any other type of IP, they should first enter into a contract to cover their respective rights. A collaboration agreement will define their respective rights in the IP, not only among the creators themselves, but also in relation to third parties that seek to purchase or license the IP rights or infringe those rights. In the absence of an agreement, the rights of parties who have expended time and labor in a joint effort and who subsequently dispute those rights may be determined by statutory laws or court rulings that are not satisfactory to either party. Collaborating parties may modify the following form to reflect the particular arrangement and circumstances of their own situation. It may also be converted to letter format if the parties prefer a less formal contract.

Joint Collaboration Agreement

THIS COLLABORATION AGREEMENT IS MADE EFFECTIVE AS OF [date] BETWEEN [name and address] (FIRST COLLABORATOR) AND [name and address] (SECOND COLLABORATOR) (TOGETHER REFERRED TO AS THE COLLABORATORS). THE COLLABORATORS HAVE DECIDED TO [describe collaboration, E.G., RESEARCH AND DEVELOP AN INVENTION OR WRITE A BOOK/MUSICAL SCORE] JOINTLY, AND THEY NOW AGREE TO THE FOLLOWING TERMS AND CONDITIONS OF THEIR COLLABORATION:

1. AGREEMENT TO COLLABORATE THE COLLABORATORS AGREE TO COORDINATE AND COOPERATE IN JOINTLY CREATING THE INTELLECTUAL PROPERTY AS DEFINED IN THIS AGREEMENT. THIS AGREEMENT DOES NOT CREATE A PARTNERSHIP OR OTHER FORMAL ASSOCIATION AMONG THE COLLABORATORS, BUT MERELY FORMS A BASIS FOR COLLABORATION IN A JOINT EFFORT TO PRODUCE AND PUBLISH THE INTELLECTUAL PROPERTY.

2. INTELLECTUAL PROPERTY THE INTELLECTUAL PROPERTY THAT THE COLLABORATORS WILL JOINTLY CREATE CONSISTS OF A [patent/book/musical score/other creation] PROVISIONALLY ENTITLED [title] AND BRIEFLY DESCRIBED AS [summary]. THE COLLABORATORS HAVE TOGETHER DEVELOPED A WORKING [plan/outline/specification/other] OF THE INTELLECTUAL PROPERTY, WHICH IS ATTACHED TO THIS AGREEMENT AS EXHIBIT 1. ALL OF THESE CONCEPTIONS AND MATERIALS CONSTITUTE THE INTELLECTUAL PROPERTY REFERRED TO IN THIS AGREEMENT.

3. DIVISION OF LABOR IN CREATION THE COLLABORATORS SHALL HAVE THE FOLLOWING RESPONSIBILITIES IN JOINTLY CREATING THE INTELLECTUAL PROPERTY.

a.First Collaborator shall be responsible for [describe or list, e.g., researching and developing a prototype for the first phase of the Intellectual Property or writing the chapters of the Intellectual Property scheduled in this Agreement as first, fifth, and seventeenth through thirty-fifth, or writing and editing the entire Intellectual Property or writing the entire Intellectual Property.]

b.Second Collaborator shall be responsible for [describe or list, e.g., researching and developing a prototype for the second phase of the Intellectual Property or writing the remainder of the Intellectual Property or providing the research and story content for the Intellectual Property, editing the Intellectual Property, and supplying relevant photographs.]

4. OWNERSHIP OF INTELLECTUAL PROPERTY THE COLLABORATORS WILL OWN ALL RIGHTS IN THE INTELLECTUAL PROPERTY JOINTLY AND IN COMMON, AND THEIR RESPECTIVE RIGHTS SHALL PASS TO THEIR RESPECTIVE HEIRS, REPRESENTATIVES, AND ASSIGNS. MATERIALS AND INFORMATION COLLECTED BY EITHER COLLABORATOR FOR PURPOSES OF DEVELOPING, RESEARCHING, AND CREATING THE INTELLECTUAL PROPERTY SHALL BE OWNED BY BOTH COLLABORATORS AND MAY BE DISPOSED OF ONLY IF BOTH CONSENT IN WRITING. CONSENT SHALL NOT BE WITHHELD UNREASONABLY.

5. PUBLICATION OF INTELLECTUAL PROPERTY NEITHER COLLABORATOR HAS A RIGHT TO PUBLISH OR HAVE PUBLISHED THE INTELLECTUAL PROPERTY WITHOUT THE CONSENT OF THE OTHER, AND NEITHER COLLABORATOR MAY WITHHOLD SUCH CONSENT UNREASONABLY. ALL AGREEMENTS WITH COMPANIES FOR THE LICENSE, PUBLICATION, OR OTHER USE OF THE INTELLECTUAL PROPERTY SHALL BE WRITTEN AND MUST BE APPROVED AND SIGNED BY BOTH COLLABORATORS BEFORE TAKING EFFECT.

6. LICENSE, ASSIGNMENT, OR OTHER TRANSFER THE COLLABORATORS INTEND THAT THE INTELLECTUAL PROPERTY WILL BE OFFERED TO THIRD PARTIES FOR LICENSE, ASSIGNMENT, OR OTHER TRANSFER. THE TRANSACTION MUST BE MADE ON THE FOLLOWING TERMS, UNLESS THE COLLABORATORS AGREE IN WRITING OTHERWISE: [DESCRIBE]. 7. DECISIONS AFFECTING INTELLECTUAL PROPERTY The Collaborators shall make all decisions, including business, editorial, and financial decisions, jointly. No changes to the Intellectual Property or agreement as to its use or disposition shall be valid without consent and signature of both Collaborators. Such consent and signature shall not be withheld unreasonably. 8. COST OF DEVELOPMENT, PRODUCTION, AND PUBLICATION ALL COSTS INCURRED JOINTLY OR BY EITHER COLLABORATOR IN THE RESEARCH, DEVELOPMENT, PRODUCTION, AND PUBLICATION OF THE INTELLECTUAL PROPERTY SHALL BE BORNE BY THE COLLABORATORS IN EQUAL SHARES, PROVIDED THAT SUCH COSTS ARE REASONABLE AND IF ANY ONE COST IS MORE THAN [amount], BOTH COLLABORATORS MUST APPROVE IT IN ADVANCE OF PAYMENT.

9. DIVISION OF PROFITS NET PROFITS FROM THE LICENSE, SALE, PUBLICATION, OR OTHER USE OF THE INTELLECTUAL PROPERTY SHALL BE DIVIDED BETWEEN THE COLLABORATORS IN EQUAL SHARES.

10. DERIVATIVE OR RELATED WORKS NEITHER COLLABORATOR WILL USE, INCORPORATE, OR OTHERWISE APPLY ANY INFORMATION OR MATERIAL THAT IS PART OF THE INTELLECTUAL PROPERTY IN ANY SUBSEQUENT WORK THAT MIGHT BE PROTECTED BY INTELLECTUAL PROPERTY RIGHTS, UNLESS THE OTHER COLLABORATOR AGREES IN WRITING. FOR [time period] AFTER COMPLETION OF THE INTELLECTUAL PROPERTY, NEITHER COLLABORATOR SHALL PREPARE OR OTHERWISE PARTICIPATE IN THE DEVELOPMENT AND PRODUCTION OF ANY WORK THAT IS RELATED OR IN DIRECT COMPETITION WITH THE INTELLECTUAL PROPERTY SUCH THAT PUBLICATION WOULD DIMINISH THE VALUE AND SALES OF THE INTELLECTUAL PROPERTY.

11. INFRINGEMENT OF RIGHTS If the rights of the Collaborators in the Intellectual Property are or may be infringed or otherwise invaded by a third party, the Collaborators may take, together or separately, any legal actions available to them to stop the infringement or invasion. If the

Collaborators take action together, they shall equally share all costs and damages resulting from such action. If only one Collaborator desires to takes action to stop an infringement or invasion, the consent of the other is not required. The single Collaborator acting alone may bring legal proceedings in the names of both Collaborators, but only at the cost and expense of the single Collaborator. The single Collaborator shall indemnify the other Collaborator against all losses in such a proceeding, but the single Collaborator shall also not be required to account to the other Collaborator for any amounts recovered in the proceeding, and such amounts shall belong to the single Collaborator who took the action. 12. ASSIGNMENTS EITHER COLLABORATOR MAY ASSIGN THE RIGHTS HELD IN THE INTELLECTUAL PROPERTY TO ANOTHER PARTY, BUT ONLY AFTER THE OTHER COLLABORATOR HAS CONSENTED IN WRITING. SUCH CONSENT SHALL NOT BE WITHHELD UNREASONABLY. THE DEVELOPMENT AND PRODUCTION OF THE INTELLECTUAL PROPERTY IS A PERSONAL WORK AND CANNOT BE ASSIGNED BY EITHER COLLABORATOR. IF IT IS ASSIGNED, THIS COLLABORATION AGREEMENT SHALL BE TERMINATED.

13. DEATH OR DISABILITY OF A COLLABORATOR IF ONE COLLABORATOR DIES OR BECOMES DISABLED WHILE THIS AGREEMENT IS IN EFFECT, THE OTHER COLLABORATOR HAS A RIGHT TO COMPLETE OR HIRE ANOTHER PERSON TO COMPLETE THE INTELLECTUAL PROPERTY, AND FURTHER HAS SOLE AUTHORITY TO PUBLISH, LICENSE, SELL, AND OTHERWISE TRANSFER THE INTELLECTUAL PROPERTY. THE DISABLED COLLABORATOR OR THE ESTATE OF A DECEASED COLLABORATOR SHALL BE ENTITLED TO A PROPORTIONATE SHARE OF THE INCOME RECEIVED FROM THE INTELLECTUAL PROPERTY, WHICH SHARE SHALL BE DETERMINED BY THE PORTION OF THE CONTRIBUTION MADE BY THAT COLLABORATOR AFTER DEDUCTION OF ALL EXPENSES AND COSTS FOR DEVELOPING, PRODUCING, AND PUBLISHING THE INTELLECTUAL PROPERTY.

14. TERMINATION OF AGREEMENT IF THIS AGREEMENT SHOULD TERMINATE FOR ANY REASON WHATSOEVER, THE COLLABORATORS UNDERTAKE TO PAY EQUALLY ALL COSTS INCURRED UP TO TERMINATION, TO SPLIT EQUALLY ALL NET PROFITS, AND TO ADHERE TO THE DUTIES IMPOSED BY PARAGRAPH 10. IF ANY DISPUTE ARISES BETWEEN THE COLLABORATORS THAT THEY CANNOT RESOLVE, THEY SHALL SEEK MEDIATION OR ARBITRATION THROUGH [name an association], AND THE DECISION IN THAT FORUM SHALL BE BINDING ON THEM. IN SUCH EVENT, EACH COLLABORATOR WILL BEAR THE RESPECTIVE ATTORNEY FEES, BUT THEY SHALL SHARE EQUALLY THE COSTS AND EXPENSES OF THE MEDIATION OR ARBITRATION.

15. ATTORNEY FEES THE PREVAILING PARTY IN ANY LEGAL ACTION REQUIRED FOR ENFORCEMENT OF THIS AGREEMENT SHALL BE ENTITLED TO AN AWARD OF REASONABLE ATTORNEY FEES AND THE COSTS OF THE ACTION.

16. ENTIRE AGREEMENT THIS AGREEMENT CONSTITUTES THE ENTIRE AGREEMENT BETWEEN THE COLLABORATORS. EACH COLLABORATOR ACKNOWLEDGES RECEIPT OF A COPY OF THIS AGREEMENT AND FURTHER ACKNOWLEDGES THAT NO PROVISIONS GOVERN THEIR RELATIONSHIP OTHER THAN THOSE WRITTEN IN THIS AGREEMENT.

17. GOVERNING LAW THIS AGREEMENT SHALL BE GOVERNED BY THE LAWS OF [state/country].

FIRST COLLABORATOR SECOND COLLABORATOR

[signature] [signature] [Typed name and title] [typed name and title] [date] [date]