Collaborating with another company on a project can give your business a powerful boost in visibility, creativity, and clients. But collaborations often create intellectual property, which needs proper protection. Entrepreneurs often don't realize (before it's too late) that (1) they had protectable intellectual property and (2) what they could have done to protect it.
For example, "Vivienne," was a former school psychologist who worked for years with disadvantaged children. Her friend, Fiona, wrote about financial education and financial management for adults. Together, they developed an interactive financial literacy workshop and board game for children called, "Show Me the Money!" The collaboration hit a snag when Vivienne wanted to use the workshop for her own project with at-risk adults. Fiona then realized that "Show Me the Money!" - if used with a general adult population - could steal her thunder... and profits. So what steps can they take to move forward smoothly?
1. Maintain open communication. In the ideal, self-preservationist world, Fiona would have thought through the ramifications of collaborating before she started freely sharing her wonderful ideas. But life is rarely ideal. The solution: Fiona should sit down with Vivienne and explain her concerns. Working out a fair, written agreement concerning your intellectual property is always better belatedly, than never.
2. Identify what's at stake. Even if Fiona and Vivienne never have a written agreement, copyright laws provide them with some measure of protection. A copyright protects an original artistic or literary work. Because they created the game jointly, they are known as "joint authors." This means that each has the 100% right to use the game without permission. But each would have to account to the other for any money that she made. Still, this can get prickly. The solution: They should set clear parameters on how and where each of them can use the Show Me the Money program. They should also decide whether either of them can make any changes to the program without the other's consent.
3. Think about what the future may hold. "Show me the Money " could spawn its own industry and become known through its own trademark (by definition, a word, phrase, symbol or design, or a combination of them, that identifies and distinguishes the goods of one party from those of others). In addition to the board game and workshops, there could be spin-off books, teleclasses, coffee mugs, workbooks or notebooks, and a host of other products and related services for which Vivienne (or Fiona) could obtain a trademark (on the products) or service mark (on the services). This would generate a number of trademark issues, the first and foremost of which is "who owns it?" The solution: Fiona and Vivienne can stave off a potentially ugly legal battle by agreeing on the trademark ownership and context of use.
4. Protection against other interlopers. Assuming Fiona and Vivienne move forward with the project they need to be sure that no one misuses the "Show Me the Money" trademarks and design. The solution: They could formally apply for copyright protection for the game (there's a lot of great information and forms available on the U.S. Copyright Office website, http://www.copyright.gov). Second, any designer they hire (for the game and any other Hard Knocks graphics or website) should create the designs as a "work for hire." Why? Because rights in a design belong to the creator (designer), unless there is a written agreement that they have been created for the benefit of another (called "work for hire" in copyright terminology). Finally, in dealing with any manufacturer of the game, Fiona and Vivienne will want to confirm all of the pricing, quantity, and quality terms, plus ensure that the manufacturer will keep their game confidential. This is important because, while they cannot protect the general idea (of a board game that teaches life skills), they are entitled to protect their particular expression of the idea. So, confidentiality provisions are key.
Luckily, Fiona and Vivienne were good enough friends that they could take a step back and address all these issues in an amicable way that satisfied them both. But other entrepreneurs may not be so fortunate. Know that whenever you're in a collaboration situation, there may be intellectual property issues lurking around. Make sure you're protected by consulting with an attorney. Otherwise, you leave your "brain child" vulnerable to kidnapping by someone else.
For example, "Vivienne," was a former school psychologist who worked for years with disadvantaged children. Her friend, Fiona, wrote about financial education and financial management for adults. Together, they developed an interactive financial literacy workshop and board game for children called, "Show Me the Money!" The collaboration hit a snag when Vivienne wanted to use the workshop for her own project with at-risk adults. Fiona then realized that "Show Me the Money!" - if used with a general adult population - could steal her thunder... and profits. So what steps can they take to move forward smoothly?
1. Maintain open communication. In the ideal, self-preservationist world, Fiona would have thought through the ramifications of collaborating before she started freely sharing her wonderful ideas. But life is rarely ideal. The solution: Fiona should sit down with Vivienne and explain her concerns. Working out a fair, written agreement concerning your intellectual property is always better belatedly, than never.
2. Identify what's at stake. Even if Fiona and Vivienne never have a written agreement, copyright laws provide them with some measure of protection. A copyright protects an original artistic or literary work. Because they created the game jointly, they are known as "joint authors." This means that each has the 100% right to use the game without permission. But each would have to account to the other for any money that she made. Still, this can get prickly. The solution: They should set clear parameters on how and where each of them can use the Show Me the Money program. They should also decide whether either of them can make any changes to the program without the other's consent.
3. Think about what the future may hold. "Show me the Money " could spawn its own industry and become known through its own trademark (by definition, a word, phrase, symbol or design, or a combination of them, that identifies and distinguishes the goods of one party from those of others). In addition to the board game and workshops, there could be spin-off books, teleclasses, coffee mugs, workbooks or notebooks, and a host of other products and related services for which Vivienne (or Fiona) could obtain a trademark (on the products) or service mark (on the services). This would generate a number of trademark issues, the first and foremost of which is "who owns it?" The solution: Fiona and Vivienne can stave off a potentially ugly legal battle by agreeing on the trademark ownership and context of use.
4. Protection against other interlopers. Assuming Fiona and Vivienne move forward with the project they need to be sure that no one misuses the "Show Me the Money" trademarks and design. The solution: They could formally apply for copyright protection for the game (there's a lot of great information and forms available on the U.S. Copyright Office website, http://www.copyright.gov). Second, any designer they hire (for the game and any other Hard Knocks graphics or website) should create the designs as a "work for hire." Why? Because rights in a design belong to the creator (designer), unless there is a written agreement that they have been created for the benefit of another (called "work for hire" in copyright terminology). Finally, in dealing with any manufacturer of the game, Fiona and Vivienne will want to confirm all of the pricing, quantity, and quality terms, plus ensure that the manufacturer will keep their game confidential. This is important because, while they cannot protect the general idea (of a board game that teaches life skills), they are entitled to protect their particular expression of the idea. So, confidentiality provisions are key.
Luckily, Fiona and Vivienne were good enough friends that they could take a step back and address all these issues in an amicable way that satisfied them both. But other entrepreneurs may not be so fortunate. Know that whenever you're in a collaboration situation, there may be intellectual property issues lurking around. Make sure you're protected by consulting with an attorney. Otherwise, you leave your "brain child" vulnerable to kidnapping by someone else.
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