IP Assignment and Background Asset Carveouts in an Independent Contractor Agreement: A Guide for a Course Creator

Introduction

When you're creating a course, the last thing you want to worry about is who owns the materials you developed. IP ownership and background asset carveouts are vital components of an independent contractor agreement, especially for course creators. If these elements are missing, you might find yourself in a sticky situation where the rights to your hard work are unclear, or you could lose access to your proprietary tools. It's crucial to establish clarity early on, which can save you headaches down the road. If you haven’t yet considered including these clauses in your agreements, now’s a great time to start.

What Is IP Assignment?

Intellectual property (IP) assignment means transferring ownership of your creative work from one party to another. In the context of course creation, this typically happens when a client pays for materials you’ve produced. Most clients expect to own the content after payment because they've invested in it. As a course creator, you need clarity on what happens to the materials you create and what rights you retain. This ensures there are no misunderstandings and that both parties know what to expect.

What Are Background Assets?

Background assets are the tools, frameworks, and methodologies you use in your creation process that you want to protect. For example, if you have a unique teaching framework or a data model that’s essentially your secret sauce, those materials should fall under a background asset carveout. This carveout helps protect your intellectual property by specifying that while the client gets certain deliverables, you still own the proprietary methods and resources you utilized to develop your course.

Work Product. Upon full payment of the Fees provided in the SOW, Consultant agrees that the deliverables, work product, content and other materials created, developed or conceived by Consultant for Client for purposes of this Agreement as provided in the SOW (the “Work Product”) shall be the sole and exclusive property of the Client. Consultant hereby irrevocably assigns to Client all right, title and interest worldwide in and to the Work Product, including all copyrights, patents, trademarks, trade secrets, and other intellectual property rights therein. Consultant acknowledges that to the extent permitted by law, all of the Work Product consisting of copyrightable subject matter is “work made for hire” as defined in 17 U.S.C. § 101 or any similar or analogous law or statute of any other jurisdiction and such copyrights are therefore owned by Client. To the extent that the Work Product and/or the results and proceeds of the Services may ever be determined under the laws of any country not to be a “work made for hire,” Consultant hereby confirms that effective on the date of creation of the Work Product, it assigns (or has assigned) to Client all right, title and interest thereto (including all copyright and associated rights, extensions and renewals, and all causes of action appurtenant thereto) throughout the world. If Consultant has any rights in any jurisdiction, including without limitation “artist’s rights” or “moral rights,” in the Work Product that cannot be assigned, Consultant hereby unconditionally and irrevocably waives the enforcement of such rights, and all claims and causes of action of any kind against Client or Client’s customers.

Background Assets. “Background Assets” are the materials, tools, utilities, techniques, technical frameworks, data models, object models, methodologies, know-how and information (both in object code and source code) made available to Client by Consultant under this Agreement that are proprietary to Consultant. This Agreement grants Client a non-exclusive limited right to use the Background Assets and does not constitute a sale or convey title or ownership of the Background Assets or any intellectual property rights therein to Client. Consultant is and shall remain the sole and exclusive owner of all right, title and interest in and to the Background Assets, including all improvements or modifications made thereto, and all intellectual property rights embodied in or related to the Background Assets.

This balance in ownership protects both the contractor and the client. The client gets the work product they paid for, while you, as the course creator, retain rights to your original methods and tools, ensuring you can continue to innovate.

Example Scenario

Imagine you are a course creator who has developed a unique online teaching platform using proprietary flashcards and quizzes. Your client hires you to create a marketing course based on these tools. With appropriate background asset carveouts in place, you can deliver the course materials while still retaining ownership of those flashcards and quizzes. This means you can use them in future projects, keeping your creative assets safe and sound.

How Counsel Club Helps

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FAQs

What’s the key difference between work product and background assets?

Work product refers to the specific deliverables created for the client, while background assets are your proprietary tools and methods used in creating those deliverables.

Do I need to provide a license to use my background assets?

If you include a carveout, you can grant clients a limited license to use your background assets specifically for the project, but you retain full ownership.

Are source files included in the work product?

This usually depends on what's negotiated in your agreement. Clarifying this in your SOW can prevent misunderstandings.

How do I handle third-party or open-source components?

It's essential to specify how these components are used in your background asset carveout and ensure compliance with their licensing terms.

How should I document the split between work product and background assets in the SOW?

Be explicit in your SOW about what constitutes work product and what remains your background asset. This clarity helps avoid disputes later.

Final Thoughts

Including well-crafted clauses on IP assignment and background asset carveouts is essential for protecting your work and ensuring your agreements are fair. Don’t leave your intellectual property vulnerable. Adding these clauses now can save you from future issues. If you need help crafting your contract, reach out for legal support today.