Intellectual property is one of the key components for a business’s success. This kind of intangible asset comprises of patents, trademarks, copyrights, domain names, and trade secrets and is crucial in the competitive market. Intellectual property can be developed by the company’s owners, employees, or independent contractors. However, it is important to address the ownership rights from the inception to avoid complications.
Website and mobile application development should be part of the business plan for all online and internet-based organizations. They are important factors because they promote access and momentum on the internet. A business should create an inventory of its intellectual properties and keep track of their ownership. It should also register them with government agencies – e.g., Copyright Office or USPTO – in order to protect the legal rights. The ownership rights may be transferred through certain protocols depending on the applicable statutes. In most cases, the assignments should be in writing pursuant to the statutory guidelines. For example, California Civil Code Section 1624, which addresses the statute of frauds, requires the assignments to be in writing. In addition, pursuant to 15 U.S.C. § 1060(a), the “goodwill of the business” should be included in the assignment of trademarks or else it will not be valid.
In some cases, an assignment of rights is not possible since the ownership rights cannot be transferred to the company. Or, the owner refuses to transfer the legal rights to the company. So, the alternative to assignment of rights is to obtain an “exclusive license” from the intellectual property owner. A copyright owner may grant exclusive rights to a third party through a written instrument. Then, in return, the exclusive licensee has the right to protect and file a lawsuit against the infringing party. However, the exclusive licensee cannot sub-license the copyrights to another individual without the original copyright owner’s consent. In an exclusive license, the parties agree that no other individual can use the intellectual property rights except the licensee. These types of licenses are usually granted to allow the particular technology to be moved into the market without additional steps. So, it incentivizes the licensee to invest in the technology’s development.
The enforcement of your rights is another key component. There are specific statutory guidelines when it comes to intellectual property rights. For example, there are state and federal laws, including, but not limited to, the Copyright Act (codified under 17 U.S.C. § 101, et seq.) and Trademark Act (codified under 15 U.S.C. § 1051 et seq.) that can apply to the particular case. The copyright and exclusive licensee’s rights may be enforced in state or federal courts. However, if there are no state law issues – such as fraud or breach of contract – then the most suitable forum would be the federal courts.
Our law firm can assist the parties to negotiate and transfer their legal rights by going through correct procedures. We can draft and review license agreements that include the necessary provisions. We can draft agreements between the copyright owner and software developers. It is important to have our legal team review the agreements and advise the client about his or her legal rights. This is especially important because there may be nefarious individuals or other potential complications in the equation. We will protect your intellectual property by drafting the relevant legal documents such as website, application, and software development agreements. These agreements can help you outline your rights and responsibilities and avoid unnecessary complications in the future. We can also prepare and send cease-and-desist letters (also known as “demand letters”) to the infringing parties.
Our law firm is experienced in negotiating mobile application and video game development contracts which may include multiple parties in various jurisdictions. We can draft an End User Licensing Agreement (“EULA”), website development contracts, enterprise mobile application contracts, or software development contracts on different operating system platforms.
It's important to know your legal rights and responsibilities when it comes to website and mobile application development laws. Please contact our law firm to speak with a knowledgeable website and mobile application development attorney at your convenience.