Laura's Contract Strategies Newsletter - August 29, 2024

Hi everyone!

It's Laura here. I'm thinking a lot about intellectual property (IP) licensing these days. I want to share some of my advice on developing better skills and expertise. The most important way is to learn the fundamentals of intellectual property. Let me explain why that is so important.

With most commercial contract terms, we have a lot of flexibility in drafting them. We can use plain language and focus on creating clear and precise language. We can word and structure these provisions in many different ways.

That's not the case with IP license and assignment provisions. With these, we must draft provisions to align with the statutory concepts. The U.S. Patent Act and the U.S. Copyright Act define the scope and rights. When we use words in our license and assignment provisions that are inconsistent with the statutes, we create confusion.

That isn't to say you are prohibited from using non-statutory words in your license provision. You can make that choice, but you have to understand what happens when you do. For example, "use" is not an exclusive right under the Copyright Act. Granting a license to "use" a copyrighted work is not granting a statutory right. It is authorizing something, but that something is not the intellectual property right established by the statute.

Another example of the importance of knowing the statute relates to works made for hire. This term is defined by the Copyright Act. It has very strict criteria for the sorts of work that can qualify. If you rely solely on the work made for hire contract provision to assign rights in a type of creative work not covered by the statutory concept, you are creating a legal mess.

These are examples of why it is so critical that everyone who works with contracts learns about the intellectual property law behind the provisions. Make sure you understand the definitions and rights. With that information, you can better tailor your provisions to grant or receive the rights you need for the business objective. If you don't know what the IP laws say, you will have a much harder time making sure that your company or client is protected.

I recently created a free IP Training Hub on the How to Contract website to help people learn this critical subject. I'll be adding to it over time, bringing to you more resources and training tools. I also offer a two-hour course on IP that dives deeper into the issues and nuances. I'm offering that as a live virtual course on September 12, 2024.

Whatever way you prefer to learn, I urge you to find the time and invest your energy into your own training on the subject.

MY CONTRACT TIP OF THE WEEK

Today's contract tip is about staying clear about why your client is doing this deal.

I know this much.

It isn’t so you can engage in a battle of wits with the counterparty’s lawyer. It isn’t so you can make the contract into a work of art. It isn’t so you can see how many concessions you can extract from the other side.

Your client’s goal for the deal is to create a business relationship that allows the parties to pursue an opportunity that benefits them both.

We know this in our heads, but it is easy to get caught up in the negotiation as an end to itself. After all, that is our task and focus. Plus we lawyers want to win. We are overachievers and trained to be zealous advocates for our clients. That all leads us to focus on making each provision protect our client as much as possible. While important, we also must temper that with why the client engaged us.

The client hired us to help the business achieve the outcome. That outcome is why the client is negotiating the contract with the counterparty. The contract is only part of what determines the success or failure of that outcome. That outcome always needs to be the priority.

In other words, don’t win the battles only to lose the war.

EXPLORE OTHER CONTRACT TIPS ON...

MY MEME OF THE WEEK

I decided to dive back into the world of contract memes after not doing any for the last eight years. I enjoy the creative process of finding a way to highlight some maddening aspect of our reality when we work with contracts. This week I focused on the impact that hardlined customer policies and contracting practices have on the vendor relationship. Click here to read the post seen by 183,000 people or the 141 comments.

INTELLECTUAL PROPERTY ESSENTIALS COURSE: LIVE COURSE ON SEPTEMBER 12, 2024

I'm thrilled to offer my IP Essentials training as a live virtual course for the first time since September 2023.

Before I went in-house in 2005, I spent nine years working on contracts, the last five as an associate in the Technology Transactions group at Morrison Foerster. The technology aspects of contracts have always been my first love and the foundation of my contract expertise.

I've made a bunch of updates to the course since I offered it a year ago. I keep the same general monkey theme but will be getting into more drafting advice and highlighting ways different provision wording impacts the rights of the parties.

This course is only $195 ($147 for HTC members). Sign up to join me live on September 12, 2024, at 12 pm ET. You can find out more here.

MY NEW BOOK SALES MILESTONES - 8,000 COPIES SOLD

I never set out to be an author, but it has been an incredible experience seeing the impact of my book Practical Tips on How to Contract. It's now sold more than 8,000 copies and generated over $71,000 in royalties. If you purchased a copy, thank you so much for contributing to its success. Click here to purchase it on Amazon.

CONTRACTSCON HOTEL BLOCK READY FOR RESERVATIONS

I'm so thrilled to share that we've secured Embassy Suites by Hilton Las Vegas for ContractsCon 2025 in Las Vegas on January 22-23, 2025. The rooms are only $209/night plus tax with no resort fee. That rate includes a full breakfast, evening appetizers and drinks, and access to the shuttle bus we'll have to the event space on UNLV campus. These rooms are going for $450+ for these nights. I hope you'll join us in January for an incredible training experience. Head over to the ContractsCon website to get the link and buy your ticket today.

LIVE VIRTUAL COURSE SCHEDULE

If you'd prefer to take individual courses, I'll be offering all seven of my core courses this fall. Here's the list and dates. Click on the course name to find out more. These are also all available on-demand.

Each two-hour Essentials course starts at 12 pm ET. The price is $195 and each four-hour Mastery course is $395 You can use the promo code NEWSLETTER10 to get an additional 10% off.

SEPTEMBER

Intellectual Property Essentials - September 12, 2024

OCTOBER

NDA Essentials - October 23, 2024
NDA Mastery - October 3-4, 2024
Limitation of Liability Essentials - October 23, 2024

NOVEMBER

Boilerplate Essentials - November 13, 2024

DECEMBER

Indemnification Essentials - December 4, 2024
Indemnification Mastery - December 5-6, 2024

Thanks for your support! See you next week. Until then, happy contracting!

All my best,
Laura Frederick, Founder and CEO @ How to Contract

P.S. Email us at [email protected] if you have any questions.