Intellectual property provisions in commercial contracts
Ownership, license scope and the indemnity that backs them.
Esshaki Legal Media TeamCurrent as of June 2024
Contracts that involve creating or using intellectual property need four
provisions to work together.
Background and foreground. What each party brings, and what is created under
the agreement. Silence about background IP produces claims of implied license;
silence about foreground IP produces disputes about ownership.
Ownership of deliverables. Present-tense assignment where the customer is to
own, because work made for hire covers only enumerated categories for
contractors. Where the supplier retains ownership, the customer needs a license
broad enough to use, modify and have others modify the deliverable.
License scope. Exclusive or non-exclusive; field of use; territory;
duration; sublicensing; affiliates; and whether it survives termination.
Ambiguity in any of these is the dispute.
Residual knowledge and improvements: who owns modifications the supplier
makes, and whether the customer’s feedback becomes the supplier’s property.
Third-party materials. Identification of open source and third-party
components with their license terms, and a warranty of compliance.
Indemnity for infringement claims, with the standard remedies of procuring
rights, modifying, or refunding, and with exclusions for customer-supplied
materials and combinations.
Escrow of source code for business-critical software, with defined release
conditions.