IP Assignment and Background Asset Carveouts in Independent Contractor Agreement: A Guide for a Brand Strategist

As a brand strategist, understanding the nuances of IP ownership and background asset carveouts in your independent contractor agreement is crucial. These elements can be the difference between keeping control of your innovative tools and methods or losing them altogether. When these provisions are missing, you might find yourself in unexpected situations where your hard work is used without your permission. Imagine developing a unique framework only to find out your client claims ownership of it after you’ve been paid. That would be frustrating, right? To avoid such scenarios, you'll want to ensure your agreement is clearly worded. You can add this to your agreement right now by customizing your contract here: Customize your Independent Contractor Agreement now.

What Is IP Assignment?

IP assignment is a straightforward concept that every brand strategist should understand. In simple terms, it refers to the transfer of ownership rights of intellectual property from one party to another. When you create a deliverable for a client, they typically expect to own that work once they’ve paid for it. However, as a creator, you also need clarity around what is being transferred and what remains yours. This clarity ensures that everyone is on the same page about the deliverables and saves you from potential disputes down the line.

What Are Background Assets?

Let’s shift our focus to background assets. These are the proprietary tools, techniques, or methodologies that you, as a consultant or agency, have developed over time. It’s essential to carve out these assets in your agreement to protect them. By having a background asset clause, you retain ownership of your unique processes and tools while granting your client a limited right to use them during the project. This ensures that you can continue to leverage these assets in future work, protecting your creative capital.

Suggested Clause Language

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 language is vital for protecting both parties. It ensures your client has the rights they need over the work product while you maintain ownership of your background assets. This balance allows you to operate freely and avoid unintentional loss of your valuable intellectual property.

Example Scenario

Imagine a brand strategist who has developed a proprietary marketing framework that delivers impressive results for clients. In a recent project, the strategist used their framework to create a comprehensive marketing plan for a new product launch. Thanks to clear clause language in their independent contractor agreement, the strategist retained ownership of the framework even after delivering the final work product to the client. This safeguard ensured that while the client could use the marketing plan for their product launch, they couldn’t just take the framework and use it for other projects or with other consultants. This is precisely why having clear provisions around both IP assignment and background assets is crucial for brand strategists.

How Counsel Club Helps

Counsel Club re-imagines legal for startups, freelancers, and creative entrepreneurs. Our platform allows you to search for lawyer-drafted forms for startups, freelancers, content creators, and other creative entrepreneurs. Our platform guides you through modifications, both to the contract and the scope of work. Counsel Club has the most sophisticated drafting tool on the market, and it was designed and developed by lawyers. If you want more help, reach out to a Counsel Club lawyer through our Concierge program. Our legal agent, Amicus, was trained on proprietary legal data to be your best legal assistant. Finally, legal for today, that is fast, protective, and cost effective.

FAQs

What happens if I don’t include IP assignment in my contract? If IP assignment isn’t addressed, you risk losing ownership of your work after you’ve been paid, which could lead to conflicts down the road.

Can my background assets still be used by my client? Yes, but only in the scope defined in your agreement. Your client gets to use them for the project, but you maintain ownership.

What if I'm hired for multiple projects? Each project can have its own terms. It's essential to outline what applies to each one in your agreements.

Do I need legal assistance to draft these clauses? While you can draft them yourself, having legal guidance ensures that your clauses are clear and enforceable.

How often should I review my contracts? Regularly reviewing your contracts helps you stay updated with legal changes and best practices.

Final Thoughts

In conclusion, IP assignment and background asset carveouts are significant elements that every brand strategist should include in their independent contractor agreements. They not only protect your creative work but also ensure you maintain ownership of your valuable methodologies and frameworks. There is no better time than now to customize your contract to include these essential protections. You can do this by clicking here: Customize your Independent Contractor Agreement now.