Hey all.
(If this question is in the wrong location, I apologize.)
So, I own a small gaming company. We make card games and tabletop games. Recently I was contacted by a developer interested in turning one of our tabletop games into a mobile app. The developer has an interest in using characters and settings from our game for the mobile version. Neither the developer nor myself have any experience in dealing with something like this. I want to make sure that if the developer uses our IP that we will be compensated accordingly. However, I am beyond ignorant on matters like this.
Can someone point me in a direction as to how I can go about doing this? What are my first steps in this? I feel lost.
Thanks for providing your state name, Sleepy Bear.
Because neither you nor the developer have any experience with the licensing or assignment of copyrights, you really should sit down with an IP attorney in your area for a personal review. You will want to consider first what exactly you want from any agreement you make with the developer. There are several options available to you, each with their own pros and cons.
Licensing the rights to use your copyrighted material can be structured to meet the needs of the developer without you giving up all of your own rights to the characters and settings. This can be done through a non-exclusive license which could allow you to continue to use the characters and settings as you want to in your tabletop games or card games and could allow you to develop additional tabletop or card games with these characters. The developer could potentially be granted a "limited non-exclusive" license, where the rights to use your copyrights are limited to using the characters and settings for the mobile app only (for a flat fee, royalties, whatever).
Or you can license only some of your exclusive rights to the developer, giving the developer exclusive rights to a mobile app. You could retain rights to everything but mobile app development.
Or you can transfer all exclusive rights in your characters and settings to the developer for X amount of dollars and the developer would then become the new copyright owner. You would be X dollars richer but with no copyrights remaining to the character or settings. You give those up with a transfer of all exclusive rights.
With the copyrights in your characters and settings, you currently have the exclusive right to reproduce them, create derivatives of them, distribute them and display them. Which of these rights you want to give up to another, temporarily through a limited license or through a non-exclusive license or a limited exclusive license or a transfer of rights ... is up to you.
There is no right or wrong way to form an agreement. What is decided between you and the developer, in other words, is what you both agree meets your wants and needs. But whatever is decided on, the agreement needs to be in writing and signed by both you and the developer. It should be carefully drafted in case a dispute arises later.
Again, an IP attorney in Kentucky should be consulted. The attorney can give you personal guidance and advice that cannot be offered on a forum. You will also want to address with the attorney any trademark rights you may have through your past sales of tabletop and card games.
Good luck.
