derivative work - rights to publisher and rights reserved

From: Andrew SkinnerLopata <asl[_at_]callatg.com>
Date: Tue, 26 Apr 2005 14:35:31 -0400

Hypo:

Three individuals, who are the only owners and officers of a C-Corp, have worked collaboratively on a project for years. A few years ago they started distributing and selling their work (a spiral-bound training manual) with a copyright notice in the name of the C-Corp only. They also use the printed materials in training presentations.

They have recently developed an interactive DVD and website with a publisher/software developer, which is based on the material they have authored over the years. They have signed no agreement with the publisher, and the product is now ready for market. The publisher has presented them with a contract which would transfer all of the C-Corp's copyright rights to the publisher, and declare it a work for hire (with the publisher as the owner)! I of course would advise hypothetical C-Corp to not sign such an agreement.

In drafting a counter proposal contract to the publisher, I would cobble together pieces of other samples and forms that I have, which would include the following basic assumptions and provisions: a) the product the publisher will be selling is a work derivative of C-Corp's original printed work.
b) the C-Corp wishes to grant/transfer any rights to Publisher necessary to register the copyright in the derivative work, and also to produce, distribute, market, and sell the product, to collect all gross receipts and pay royalties to the authors, for a certain term. c) C-Corp does not want to give up any rights to underlying work, except to the extent necessary to license rights to publisher to do their job.

I have a few questions:

1. Can anyone share a sample contract which anticipates that the work in question is a derivative work, and has provisions that incorporate the assumptions above? I've looked through the forms in Nimmer on Copyright, and various other resources, and can't find anything quite right.
2. The C-Corp owners must maintain the ability to use the underlying work in their presentations, and want to use the new derivative work as well. Can they grant publish an "exclusive" transfer of publishing rights, while retaining the right to perform and sell the work in conjunction with their on-going business, but relinquish the right to license these publishing rights to others during the contract term? Would the reservation of such rights still allow the publisher to register the copyright in the new work?
3. Given that some of the material in the derivative work is new (e.g. animation on the DVD), does the publisher have a claim for copyright in those aspects of the work, and if so, how would that be established?

Thanks in advance for any responses.

-Andy

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Andrew SkinnerLopata, Associate
Kaufman & Stewart, Attorneys at Law
270 Oakway Center
Eugene, OR 97401-5663
541.342.5587
asl[_at_]callatg.com Received on Tue Apr 26 2005 - 22:35:31 GMT