Licensing jointly owned IP question

[Jake_Blues]

What is the name of your state (only U.S. law)? NY

I am the 50% creator of a piece of intellectual property (a tabletop board game). A publisher has offered my co-designer and me a licensing agreement, however, I have been unable to get a response from my co-designer. I have tried multiple methods, and while I can't absolutely prove he received the messages, I know he's alive and well, and we haven't had any kind of falling out or dispute, so I'm not sure what's up.

What I am unsure of is how to proceed. Our agreement (verbal/email, essentially) is that we would share all royalties to the IP 50/50, which I still intend to honor. However, I'm unsure whether there's a way to proceed with entering the agreement with the publisher. Is there a legal way for me to "seize" the rights to the design from my co-designer? I can at least demonstrate from email that he was amenable to the publisher considering the IP, but obviously if I can't reach him I can't get his signature on the license agreement.

I want him to be fairly compensated for his share of the project, and if he said "no" that would be one thing; mainly, I don't want the work I put in on this project to come to nothing simply because my co-designer is being non-communicative!

I welcome any thoughts, including what specialty of lawyer I should be approaching for advice.

 

[quincy]

What is the name of your state (only U.S. law)? NY

I am the 50% creator of a piece of intellectual property (a tabletop board game). A publisher has offered my co-designer and me a licensing agreement, however, I have been unable to get a response from my co-designer. I have tried multiple methods, and while I can't absolutely prove he received the messages, I know he's alive and well, and we haven't had any kind of falling out or dispute, so I'm not sure what's up.

What I am unsure of is how to proceed. Our agreement (verbal/email, essentially) is that we would share all royalties to the IP 50/50, which I still intend to honor. However, I'm unsure whether there's a way to proceed with entering the agreement with the publisher. Is there a legal way for me to "seize" the rights to the design from my co-designer? I can at least demonstrate from email that he was amenable to the publisher considering the IP, but obviously if I can't reach him I can't get his signature on the license agreement.

I want him to be fairly compensated for his share of the project, and if he said "no" that would be one thing; mainly, I don't want the work I put in on this project to come to nothing simply because my co-designer is being non-communicative!

I welcome any thoughts, including what specialty of lawyer I should be approaching for advice.

If you are, in fact, a co-owner or coauthor of the tabletop board game, you do not need permission from your coauther to license rights to the game with a publisher. You can do with the game as you wish and your coauthor can do with the game as he wishes. You need, however, to share with your coauthor all profits realized from the game.

So, to answer your question: There is no way to "seize" the rights to the game from your coauthor. Your coauthor would have to transfer by way of a signed and written agreement all of the exclusive rights he holds in the game in order for you to become sole holder of the rights.

You will want to consult with an intellectual property attorney (trademark/copyright/patent) and this would be a smart action to take prior to signing a license with the publisher. You want to ensure that you do hold equal rights to the work before licensing rights.

Did you register the game with the US Copyright Office or US Trademark/Patent Office?

Good luck.

 

[Jake_Blues]

Thank you for the quick reply!

The issue is that the licensing agreement with the publisher will want us to transfer full rights to the game. So, the publisher won't want a situation in which one designer licenses it to one publisher and the other publisher licenses it with another.

Board games are, to my understanding, a bit of a weird area of IP anyway since technically, the stuff that designers license to publishers -- the set of mechanisms by which the game is played -- isn't actually protectable by copyright or patent (usually).

 

[quincy]

Thank you for the quick reply!

The issue is that the licensing agreement with the publisher will want us to transfer full rights to the game. So, the publisher won't want a situation in which one designer licenses it to one publisher and the other publisher licenses it with another.

Board games are, to my understanding, a bit of a weird area of IP anyway since technically, the stuff that designers license to publishers -- the set of mechanisms by which the game is played -- isn't actually protectable by copyright or patent (usually).

The game play is not (generally) protectable. The rights you and your coauthor have are to any copyrightable elements of the game(designs/images) and any trademarks (characters/names). Games can have patent protection, depending on the facts.

So, what you are saying is that the game publisher wants to acquire ALL exclusive rights to the game so that you and your coauthor no longer hold any rights. The game publisher wants to buy out the rights and become the new owner. The transfer that the publisher wants is an assignment, then, rather than a license. A license gives permission to another to use the rights-protected work under specified conditions, generally for a specified period of time.

You should continue to try to locate your coauthor, then. Both you and your coauthor must agree to any assignment of rights (and to any exclusive license granted another).

And I recommend you sit down with an IP attorney in your area once you locate the coauthor, prior to transferring rights (if your coauthor is amenable to a transfer).

It is really too bad you did not commit your agreement with your coauthor to a written and signed document.

Good luck.

 

[Jake_Blues]

Ok, thanks for clarifying. I've always heard of it referred to as a licensing agreement, generally because the rights are acquired by the publisher for a limited time (essentially, for as long as they keep the game in print, then the rights revert back to the creator).

Yes, I do wish we had our agreement in writing! (Although, not sure it would help in terms of getting him to respond to messages that he's currently ignoring!)

Thanks again!

 

[quincy]

Ok, thanks for clarifying. I've always heard of it referred to as a licensing agreement, generally because the rights are acquired by the publisher for a limited time (essentially, for as long as they keep the game in print, then the rights revert back to the creator).

Yes, I do wish we had our agreement in writing! (Although, not sure it would help in terms of getting him to respond to messages that he's currently ignoring!)

Thanks again!

Licensing of copyrights is more common than the assignment of copyrights. The first is the copyright holder granting permission to another to use his work. These rights are generally non-exclusive rights (meaning the copyright holder still retains all rights) and these rights are generally restricted rights (as to time, place, purpose). An assignment, on the other hand, transfers exclusive rights in the copyrighted work - with exclusive rights being the right to reproduce or copy the work, the right to display or perform the work, the right to distribute the work, and the right to create adaptations or derivatives.

If all exclusive rights in a copyrighted work are transferred, the original copyright holder no longer has any rights in the work. There is a new copyright holder. If one or more of the exclusive rights are transferred, the original copyright holder no longer has rights to the exclusive right transferred. All transfers of rights must be in writing and hand-signed by the original copyright holder for the transfer to be valid. All transfers of rights should also be recorded with the US Copyright Office.

An example: A single book author may wish to transfer all exclusive rights to distributing his book to a publisher. The book author then has no right to distribute his book. The publisher has become the copyright holder for that exclusive right. The book author, however, retains the right to copy the book, display the book and create derivatives of the book.

Coauthors cannot transfer exclusive rights, in whole or in part, without the consent of both coauthors. Each coauthor can, however, grant non-exclusive licenses to others without permission of the other. The only thing the coauthors need to do is share in any and all profits generated from the licenses.

At any rate, good luck in your search for your coauthor.