subject: Ways To Forgo Your Intellectual Property [print this page] 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. Keep an open communication. In an ideal world, Fiona should have given thought to the implications of a joint collaboration before freely sharing her concept. However, life is never always ideal. The solution: Fiona should voice her fears with Vivienne, and work out a mutually beneficial agreement on the intellectual property. In this case, it's better late than never.
2. Research what the stakes are. There is some form of copyright protection for Fiona and Vivienne. Copyright law protects all original works, be it literary or artistic. In this case, Vivienne and Fiona are "joint authors", even if they did not have a prior written agreement. Each can fully use the game without the other's consent, but would have to account to the other for the earnings. This may lead to a lot more difficulties later. The solution: Make the ground rules for how and where each can use "Show Me the Money" game, and decide if either can change the game without needing the other's permission.
3. What lies in the future? : "Show Me the Money" could be a phenomenal success and become famous through its trademark (the latter is a word, phrase, symbol or design or any combination, that distinguishes one's goods from that belonging to another). There could be various permutations such as books, workbooks and CDs, e-books, notebooks, teleclasses, T-shirts, coffee mugs, and any possible related service or product. Vivienne and Fiona can tradekmark, for a product, or servicemark, in case of a service, any of these. That would lead to complications later, particularly "who owns it?" The solution: Stop the situation degenerating into a bitter, legal fight through agreeing on trademark ownership and usage condition.
4. Ensure no one steals the idea. Were Fiona and Vivienne to proceed with the game together, they should seek protection for the "Show Me the Money" trademark and design. The solution: Get copyright protection for the board game from the US Copyright office (info and forms on their website http://www.copyright.gov. )Any design work must be a "work for hire". Whether the work is for the game, website or graphics, the designer or creator of the designs owns the rights, unless there is a prior agreement on "work for hire". Lastly, it is also important to find a manufacturer who can respect the confidentiality of the game. It is not enough just to confirm the terms related to production such as pricing, amount and quality. Keeping the game confidential is crucial because they can protect their interpretation of the game for life skills, even if they cannot trademark the general concept of a board game. A confidentiality provision is a must.
Thankfully for Fiona and Vivienne, they could resolve the issue in a friendly and mutually beneficial manner. It doesn't turn out like that for many other business owners. Consult with your attorney to make sure you have the right protection for any joint intellectual property..Failing to do so may mean that your "brain child" ends up belonging to someone else.
