What Terms Should an Assignment Agreement Contain?

We established in the previous article that copyright assignment means the temporary or permanent transfer of the rights from the original owner to another person/company through an intellectual property assignment agreement. What terms and conditions should such an agreement contain? Let me start by saying that this agreement can be structured as narrowly or as broadly as parties desire. Which one they use depends on the extent of the protections they want to have and, of course, the copyright of matter in the agreement. Regardless of the language that makes it to the final draft as a result of the parties’ negotiations, both sides should consider the following clauses:

1.      Assignment of the Work 

a)      the description of the copyrightable material being assigned, as detailed as possible;

b)      exclusive vs non-exclusive right;

c)      will the author retain some rights to the work or will it be assigned wholly and completely?


2.      Consideration

3.      Assignor’s Representations and Warranties – usually the assignee will require the assignor to make certain representations and give warranties such as:

a)      the assignor is the exclusive owner of all rights, title and interest to the copyrightable material;

b)      no other person(s) or entity is required to consent to the assignment;

c)      whether there are any outstanding licenses concerning the subject matter of the agreement;

d)      the material does not infringe upon or violate any laws or regulations or the rights of other persons or entities;

e)      the assignor will cooperate with the assignee in its defense should there be a future claim of copyright infringement concerning the assigned material;

f)       other representations and warranties depending on the subject matter, circumstances, and scope of the assignment.


4.     Improvements – whether the assignor has the right to make improvements or other derivatives based on the assigned copyright, and, if yes, whom such derivatives will belong to.

Other general provisions, such as indemnification, governing law and jurisdiction, remedies for a breach of the agreement, confidentiality, notices, who pays the expenses that may be associated with the transfer of the materials, what language will be controlling for the interpretation of the agreement if it is executed in different languages, whether a scanned copy of the signature is enforceable or a notarization is required, costs and attorney fees in the case of dispute, and more. 

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