IP Clause Rewrite

2024-04-23 18:00 UTC gpt-4 Open in ChatGPT ↗

I am trying to rewrite a contract clause regarding IP for a client. The Deliverable is an excel file that has been created to include an audiovisual + functional experience but it contains VBA code and compiled C++ libraries. We want to make sure that while the client has full rights over the final content, any code remains the sole property of ULC.

This was the clause before:

Except for ULC Property (as defined below), Client shall be the exclusive owner of all right, title and interest in and to all deliverables, including, without limitation, all materials, copy, data, designs, files, graphics, ideas and information, including, without limitation, any computer programming, software, source code, object code, HTML formatting, wire frames, user experiences, user interfaces, applications, audio-visual works, sound, musical recordings, musical compositions, “look and feel,” artwork, illustrations, images, and photographs developed, prepared, compiled, aggregated or acquired by ULC for Client pursuant to this Agreement. Except for ULC Property, all Deliverables created or prepared by ULC or ULC’s employees, vendors or subcontractors shall be considered a “work made for hire” within the meaning of the Copyright Act, 17 U.S.C. § 101, for the benefit of Client and all rights therein worldwide shall rest in Client as author and copyright owner without reservations of any kind.  If for any reason Client may not be deemed to have commissioned a “work made for hire,” and its rights to copyright are thereby in doubt, ULC hereby assigns to Client all rights in and to the Deliverables.  “ULC Property” means any pre-existing materials of ULC created by or for ULC outside of the Services and this Agreement and any custom algorithms and source code produced by ULC used to create the Deliverables, excluding any Client Confidential Information. ULC grants to Client a royalty-free, non-exclusive, irrevocable, perpetual license throughout the world to publish, modify, transfer, translate, deliver, perform, use and dispose of in any manner any portion of any such ULC Property solely in connection with Client’s use and exploitation of the Services and Deliverables.

And this is my attempt to claim the source code rights while demonstrating good faith by not reusing the code for another similar commercial project.

Except for ULC Property (as defined below), Client shall be the exclusive owner of all right, title and interest in and to all deliverables, including, without limitation, all materials, copy, data, designs, files, graphics, ideas and information, including, without limitation, user experiences, user interfaces, applications, audio-visual works, sound, musical recordings, musical compositions, “look and feel,” artwork, illustrations, images, and photographs developed, prepared, compiled, aggregated or acquired by ULC for Client pursuant to this Agreement. Except for ULC Property, all Deliverables created or prepared by ULC or ULC’s employees, vendors or subcontractors shall be considered a “work made for hire” within the meaning of the Copyright Act, 17 U.S.C. § 101, for the benefit of Client and all rights therein worldwide shall rest in Client as author and copyright owner without reservations of any kind.

It is explicitly understood and agreed that Deliverables as defined herein do not include any computer programming, software, source code (in VBA, C++, python or any other programming language), object code, HTML formatting and wire frames. ULC retains all rights, title, and interest in and to any such material, which is deemed as exclusive ‘ULC Property’ and are therefore proprietary and confidential to ULC during and after the completion of the project. Additionally ‘ULC Property’ is considered any pre-existing materials of ULC created by or for ULC outside of the Services and this Agreement and any custom algorithms and source code produced by ULC used to create the Deliverables, excluding any Client Confidential Information. ULC grants to Client a royalty-free, non-exclusive, irrevocable, perpetual license throughout the world to use, demonstrate and display the proprietary material as-is for the agreed upon purpose of the Deliverable.

ULC agrees not to use the developed tools and source code for any other client or commercial project for a period of one (1) year following the completion of the Production Phase of this project. Note: This clause is designed to protect ULC’s proprietary methods and tools while ensuring the Client receives the full and exclusive benefit of the services for the specified duration of the project.

Can you help me write this more properly to be included in a formal contract if you think it can be improved?

To further refine the language of the clause for clarity and legal precision, you can adjust some of the phrasing and structure to better delineate rights and obligations, and ensure that both the client’s ownership rights and ULC’s intellectual property rights are clearly articulated. Here is an enhanced version of your attempt:

Intellectual Property Rights

Ownership of Deliverables: Except as otherwise specified herein as “ULC Property,” the Client shall be the exclusive owner of all right, title, and interest in and to all deliverables provided under this Agreement, including, without limitation, all materials, copy, data, designs, files, graphics, ideas, and information, user experiences, user interfaces, applications, audio-visual works, sound, musical recordings, musical compositions, “look and feel,” artwork, illustrations, images, and photographs developed, prepared, compiled, aggregated, or acquired by ULC pursuant to this Agreement. All such Deliverables shall be considered a “work made for hire” as defined under the Copyright Act, 17 U.S.C. § 101, vesting all worldwide rights directly in the Client as the author and copyright owner. In the event that any Deliverables do not qualify as a “work made for hire,” ULC hereby assigns to the Client all rights, title, and interest therein.
Exclusion of ULC Property: Notwithstanding the foregoing, it is expressly agreed that the term “Deliverables” under this Agreement does not include any computer programming, software, source code (whether in VBA, C++, Python, or any other programming language), object code, HTML formatting, wireframes, or other underlying technologies or documentation. ULC retains all rights, title, and interest in and to such materials, which shall be deemed exclusive “ULC Property.” Such ULC Property includes, but is not limited to, any pre-existing materials created by or for ULC outside of this Agreement and any custom algorithms and source code developed by ULC for the creation of the Deliverables, excluding any Client Confidential Information.
License to ULC Property: ULC grants to the Client a royalty-free, non-exclusive, irrevocable, and perpetual worldwide license to use, demonstrate, and display ULC Property incorporated in the Deliverables, solely in connection with the Client’s use and exploitation of the Deliverables as agreed upon in this Agreement.
Non-Reuse of ULC Property: ULC agrees not to reuse any developed tools, software, or source code created specifically for the Client in any other client engagements or commercial projects for a period of one (1) year following the completion of the Production Phase of this project. This restriction is intended to protect ULC’s proprietary methods and tools while ensuring the Client receives the exclusive benefit of the services for the duration of the project.

This version aims to cleanly separate the definitions and stipulations regarding ULC Property from the Client’s rights, while also emphasizing the licensing arrangements and the protective measures over the ULC Property to prevent potential misunderstandings about the extent of the Client’s rights and the protections afforded to ULC’s intellectual property.

Certainly! Here’s a more formal revision of the clause that specifies the requirements for accreditation when the Deliverables are shared publicly:

Public Disclosure and Accreditation

Restrictions on Use: The Deliverables provided under this Agreement are intended primarily for internal business use within the Client’s operations. Any use of the Deliverables beyond internal business communications and media planning requires prior written consent from ULC.
Accreditation Requirement: In the event that the Deliverables are publicly disclosed or shared beyond the internal purposes as specified herein, such disclosure shall include proper accreditation to Uncharted Limbo Collective (ULC). All public uses of the Deliverables, including but not limited to promotional materials, digital and print publications, websites, awards submissions, and public presentations, as well as verbal acknowledgments in interviews and press interactions, must clearly and prominently attribute Uncharted Limbo Collective as ‘Lead Creative Coders & Visual Artists.’
Form of Accreditation: The accreditation to Uncharted Limbo Collective must be clear, unambiguous, and reasonably conspicuous, commensurate with the manner in which other credits are displayed in the corresponding material. The Client agrees to consult with ULC regarding the format and placement of the accreditation if there is any uncertainty about its appropriateness or visibility.
Enforcement of Accreditation Rights: ULC reserves the right to require adjustments to the accreditation if it deems that the placement, visibility, or clarity is not in compliance with the agreed standards. Failure to comply with these accreditation requirements may lead to actions deemed necessary by ULC to enforce compliance, including but not limited to the issuance of cease and desist directives or the initiation of legal proceedings to redress any misuse or unauthorized use of the Deliverables.

This revised clause clarifies the conditions under which the Deliverables may be used beyond internal business purposes, the specific requirements for accreditation when used publicly, and the rights of ULC to enforce these provisions.

Certainly! Here’s a more concise version of the clause, combining all points into a straightforward and integrated format:

Accreditation for Public Disclosure of Deliverables

Should the Deliverables provided under this Agreement be publicly disclosed or shared beyond their intended internal use within the Client’s business network, such disclosure shall include proper accreditation. Uncharted Limbo Collective (ULC) must be credited prominently as ‘Lead Creative Coders & Visual Artists’ in all forms of public communication. This includes, but is not limited to, promotional materials, websites, awards submissions, and media presentations, as well as verbal acknowledgments in interviews and press interactions. The Client must ensure that the accreditation is clear, visible, and consistent with the manner in which other credits are displayed, consulting with ULC to confirm appropriateness if necessary. Failure to adhere to these requirements allows ULC to enforce compliance through appropriate measures, including legal remedies.

This version maintains the essence of your original intent while streamlining the text to fit within an intellectual property section without imposing specific restrictions on usage.

Yes, it’s perfectly valid to require accreditation instead of a licensing fee for public sharing, as it acknowledges your contribution and retains your branding in the public domain without financial exchange. You can explain this trade-off clearly in the contract to ensure both parties understand the terms of use and the benefits provided through this arrangement. Here’s how you could phrase this:

Accreditation in Lieu of Licensing Fee

In lieu of a licensing fee for the public disclosure and sharing of the Deliverables beyond their intended internal business use, ULC requires proper accreditation as compensation for such usage. The Client agrees to credit Uncharted Limbo Collective prominently as ‘Lead Creative Coders & Visual Artists’ in all forms of public communication, including promotional materials, websites, awards submissions, media presentations, and verbal acknowledgments in interviews and press interactions. This accreditation serves as recognition of ULC’s contributions and replaces any financial remuneration for the expanded use of the Deliverables. The Client must ensure that this accreditation is clear, visible, and consistent with how other credits are displayed, and should consult with ULC to confirm appropriateness if necessary. Failure to adhere to these accreditation requirements permits ULC to enforce compliance through appropriate measures, including legal remedies.

This wording clarifies the reason for the accreditation requirement and connects it directly to the waiver of licensing fees, framing it as a compensatory measure.

perfect

can you now explain to me this indemnification clause? I am struggling to make sense of it

8.2 The indemnities in this Agreement are contingent upon: (i) the indemnified party promptly notifying the indemnifying party in writing of any claim which may give rise to a claim for indemnification hereunder (provided, however, that the failure to provide prompt notice shall not relieve the indemnifying party of its indemnification obligation except to the extent such delay prejudiced the indemnifying party’s ability to defend or settle such claim); (ii) the indemnifying party being allowed to control the defense and settlement of such claim; and (iii) the indemnified party cooperating with all reasonable requests of the indemnifying party (at the indemnifying party’s expense) in defending or settling such claim. The indemnified party shall have the right, at its option and expense, to participate in the defense of any action, suit or proceeding relating to such a claim through a counsel of its own choosing, provided that the indemnified party will not settle any claim without the consent of the indemnifying party.

The indemnification clause you provided outlines conditions under which one party (the indemnifying party) agrees to compensate the other (the indemnified party) for losses or damages in connection with certain claims. Here’s a breakdown of the clause for clarity:

Notification of Claims: The indemnified party must promptly inform the indemnifying party in writing if a claim arises that could potentially require indemnification. The clause adds that if the indemnified party fails to notify promptly, the indemnifying party’s obligation to indemnify isn’t waived except to the extent that this delay has negatively affected the indemnifying party’s ability to defend against or settle the claim.
Control Over Defense and Settlement: The indemnifying party has the right to control the defense and the settlement of the claim. This means they can decide the legal strategy and any potential settlement terms, assuming responsibility for handling the situation.
Cooperation of the Indemnified Party: The indemnified party must cooperate with the indemnifying party in defending or settling the claim. This cooperation must be reasonable and is to be funded by the indemnifying party (e.g., providing documents, attending interviews, or other supportive actions).
Participation in Defense: Although the indemnifying party controls the defense, the indemnified party has the right to participate in the defense at their own expense. This means they can hire their own lawyer to be involved in the defense process.
Consent for Settlement: The indemnified party cannot settle any claim without the consent of the indemnifying party. This is to ensure that the indemnifying party agrees to the terms of any settlement since they will be responsible for paying.

In essence, this clause is designed to ensure that the indemnifying party can efficiently manage and control claims for which they will be financially responsible, while also ensuring that the indemnified party is involved and informed throughout the process. This balance aims to protect both parties’ interests when dealing with potentially indemnifiable incidents.

Yes, the clause you’ve described is a standard indemnification clause and is generally fair, assuming that the roles and responsibilities of both parties are clear and acceptable to them. It sets up a structured process for managing claims that might require indemnification, ensuring that both parties are involved in the process and have their rights protected. Here are a few points that reflect why this clause can be considered fair:

Prompt Notification: This ensures that the indemnifying party is made aware of claims early, allowing them to prepare and respond adequately. It also specifies that a failure to notify promptly does not completely remove the obligation to indemnify, except where the delay affects the indemnifying party’s ability to defend the claim, which is reasonable.
Control of Defense and Settlement: Giving the indemnifying party the right to control the defense and settlement of claims helps manage potential costs and strategies since they will be financially responsible.
Cooperation and Participation: The indemnified party’s obligation to cooperate and their right to participate at their own cost allow for oversight and involvement without relinquishing total control to the indemnifying party. This dual involvement ensures transparency and that the interests of the indemnified party are considered.
Consent for Settlement: The requirement that the indemnified party not settle any claim without the indemnifying party’s consent prevents unauthorized agreements that could obligate the indemnifying party financially or otherwise.

However, it’s always important to consider the entire agreement and the specific circumstances and risks associated with the particular arrangement. If there are unique risks or if the indemnification seems overly broad or too narrow, those would be areas to negotiate or clarify further. For most standard agreements, however, this clause should serve well in managing the risks associated with indemnification.

Can we make this clause about public sharing a bit milder in terms of monitoring from the client’s side?

The Client may use all such photographs, film, video, audio recordings, and excerpts for marketing, publicity, information, industry awards and archive purposes relating to the project in all media including the Internet and in all territories. For the avoidance of doubt, any and all photographs, film, video, audio recordings and excerpts documenting the project hereunder by Client shall be the sole exclusive property of Client. Notwithstanding the above, the Digital Artists retain the right to use selected portions of documentation (e.g., short clips or images) created by the Digital Artists for the purpose of showcasing their technical and creative capabilities on platforms including social media, provided that Client pre-approves such selected portions of documentation in writing and these do not directly reference the project or the Client, thereby ensuring confidentiality. Any such use by the Digital Artists shall be in a manner that is consistent with the confidentiality obligations under this Agreement. For any Digital Artists request for Client pre-approval of selected portions of documentation, Client agrees to provide a response within five (5) business days of receipt of such request.

To make the clause about public sharing less demanding in terms of client monitoring, and to ensure smoother collaboration, consider rephrasing it to reduce the burden of approval while maintaining the necessary oversight. Here’s a revised version:

Use of Project Documentation for Promotional Purposes:

The Client may utilize all photographs, film, video, audio recordings, and excerpts for marketing, publicity, informational purposes, industry awards, and archiving related to the project across all media, including the Internet, in all territories. For clarity, all such documentation generated by the Client under this Agreement shall be the exclusive property of the Client.

Notwithstanding the foregoing, the Digital Artists are permitted to use selected portions of the project documentation (e.g., short clips or images) for the purpose of showcasing their technical and creative capabilities on various platforms, including social media. This use is subject to the following conditions:

The selected portions do not directly reference or identify the project or the Client, thereby maintaining confidentiality in accordance with this Agreement.
The Digital Artists must notify the Client in writing of their intent to use specific portions of the documentation. The Client, in turn, will endeavor to review and respond to such requests promptly, ideally within five (5) business days. However, failure to respond within this timeframe will permit the Digital Artists to proceed with the use, provided there is compliance with the confidentiality obligations specified in this Agreement.

This approach ensures that the Digital Artists can demonstrate their work while respecting the confidentiality and proprietary interests of the Client, streamlining the approval process to facilitate timely sharing.

This version introduces a “passive approval” mechanism where the Digital Artists can proceed if the Client does not respond within a specified timeframe, reducing potential bottlenecks while ensuring that the confidentiality and rights of the Client are protected.

these are the points

The term “ULC Property” includes:

All computer programming, software, source code (whether in VBA, C++, Python, or any other programming language), object code, HTML formatting, wireframes, and other underlying technologies or code documentation.

All pre-existing materials created by or for ULC outside of this Agreement and any custom algorithms and source code developed by ULC for the creation of the Deliverables, excluding any Client Confidential Information.

ULC retains all rights, title, and interest in and to such materials, which shall be deemed exclusive and proprietary.

It is expressly agreed that the term “Deliverables” excludes any and all “ULC property” which will be licenced to the client as stated in the “Services; Deliverables” section below.

ULC agrees not to reuse any developed tools, software, or source code created specifically for the Client in any other client engagements or commercial projects for a period of one (1) year following the completion of the Production Phase of this project. This restriction is intended to protect ULC’s proprietary methods and tools while ensuring the Client receives the exclusive benefit of the services for the duration of the project.

To include a point specifying ULC’s rights to reuse material developed for the project for scientific purposes or in academic papers, you can add an additional provision to the definition of “ULC Property” that explicitly grants ULC the right to use the material in such contexts. Here’s how you can frame it:

The term “ULC Property” includes:

Technology and Code: All computer programming, software, source code (whether in VBA, C++, Python, or any other programming language), object code, HTML formatting, wireframes, and other underlying technologies or code documentation.
Pre-existing and Developed Materials: All pre-existing materials created by or for ULC outside of this Agreement and any custom algorithms and source code developed by ULC for the creation of the Deliverables, excluding any Client Confidential Information.
Rights and Interests: ULC retains all rights, title, and interest in and to such materials, which shall be deemed exclusive and proprietary.
Exclusion from Deliverables: It is expressly agreed that the term “Deliverables” excludes any and all “ULC Property” which will be licensed to the client as stated in the “Services; Deliverables” section below.
Restriction on Commercial Reuse: ULC agrees not to reuse any developed tools, software, or source code created specifically for the Client in any other client engagements or commercial projects for a period of one (1) year following the completion of the Production Phase of this project. This restriction is intended to protect ULC’s proprietary methods and tools while ensuring the Client receives the exclusive benefit of the services for the duration of the project.
Scientific Use: Notwithstanding the foregoing, ULC retains the right to use any material developed during the course of this project for academic or scientific research and publication purposes. This includes the right to use such material in scientific papers, presentations, and other publications, provided that any confidential information or proprietary data specifically related to the Client is not disclosed.

This addition clarifies that while ULC is restricted from using the developed material for other commercial purposes for a year, it retains the right to use the material for academic and scientific contributions, which can be important for a technology or creative firm in maintaining its industry standing and contribution to knowledge. This also ensures that such uses are respectful of confidentiality obligations regarding the Client’s proprietary information.