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Asia’s first Follicular Unit Extraction (FUE) medical facility Located in the center of Gangnam, Seoul Korea 25,000,000 + hairs implanted until today

Asia’s first Follicular Unit Extraction (FUE) medical facility Located in the center of Gangnam, Seoul Korea 25,000,000+ hairs implanted to date

MOTION CLINIC IS THE KOREAN FUE PRIDE

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2000 grafts implanted

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FREQUENTLY ASKED QUESTIONS

Q: Are the procedures conducted by the doctors? +

• Motion Clinic practice the highest standard of FUE as conducted in the US, Canada, Australia and Europe. Korean Medical Law is strictly controlled by the Korean Government and National Health Organizations. The doctors would conduct the anesthesia. The doctors would fully conduct the extraction of the grafts using automated punches matching ones’ characteristic of scalp conditions, graft conditions, hair conditions, etc. Then the doctor would fully conduct the incisions by using micro slits into the recipient site. This procedure would be the most important and difficult stage as it determines the survival rates, designs and density. Then under the doctor’s supervision…our licensed nurses would place the grafts organized by the doctors into the incisions.  The allocation of the grafts would be fully planned by the doctor’s support.

Q: How long do I have to stay in Seoul and what are the post operational cares involved? +

• Most of our customers from North America and Europe (longer flights) would stay in Seoul for minimum 5 days to maximum 10 days. Most of our customers from South East and Mid Asia / Oceania would stay in Seoul for minimum 5 days to maximum 7 days. Post 5 days: the implanted grafts are anchored into the scalp Post 10 days: able to remove the scab formed on the recipient site and to get a hair cut >>> During your stay in Seoul... we will provide you with free post hair washes every day (excluding Sundays and holidays)

Q: Is the procedure painful? +

• At Motion Clinic we do best to lessen the pain. All FUEs are conducted under local anesthesia. With out long years of experience from 2003... we do best in serving the most comfortable FUE to our customers. During the local anesthesia... differs by individuals... one can experience moment of sting. BUT after the medication kicks in... one will be comfortable enough to fall asleep during the procedure.

Q: How does Motion Clinic allocate its grafts? +

• We will search for the needed number of singular grafts and multiple 2s / 3s / 4s from the donor area. The singular grafts would be allocated to the frontal hair line for the natural look and feel. The multiple grafts would be allocated and implanted to the inner area to bring max volume and density. And we do not dice / split / separate the grafts! We will extract 1,000 grafts / implant 1,000 grafts.

Q: Do I need to take hair loss medications before and after the FUE procedure? +

• Implanted grafts are expected to survival lifespan without loss. The main purpose is to maintain and preserve the native existing hair... which are always opened for continuous hair loss. Do note that these mentioned medications can be only purchased through doctor’s prescriptions.

Q: Is the procedure guaranteed at Motion Clinic? +

• Motion Clinic (like other high-end top clinics) would target a 95% survival rate. We give out a written guarantee to our customers on the day of the procedure mentioning “If the survival rate would be lower than 90%.... we do it for your free again after one year”.

Q: What is the cost for the FUE at Motion Clinic? +

• The cost would be calculated on a per graft basis. Shaving FUE which involves a full shaving on donor areas would cost 5,500 KRW per graft. Non-Shaving FUE which involves absolutely NO shaving on donor areas would cost 7,700 KRW per graft. Having seasonal events and promotions... do check with us for details... Also confirm the daily conservation rates for the Korean Won.

Email. [email protected]

Address. Suite 1001 Hanseung Building 1306-3 Seocho-dong Seocho-gu Seoul 06615 South Korea

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8-Day South Korea Tour to Seoul, Busan and Jeju

Immerse yourself in the dynamic capital of Seoul, where ancient palaces meet modern skyscrapers. Explore the vibrant city of Busan and its stunning beaches, bustling markets, and serene temples. Discover the natural wonders of Jeju Island, known for its volcanic landscapes, beautiful beaches, and UNESCO-listed sites. This webpage is your ultimate tour to an unforgettable adventure, showcasing the cultural heritage, breathtaking scenery, and gastronomic delights of South Korea.

We can customize this trip by adding anything you're interested in and scheduling days to fit your pace. We would happily organize a unique theme or activities for birthdays, young children, anniversaries, etc.

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Step back in time and immerse yourself in the grandeur of Gyeongbokgung Palace .

Visit the charming bukchon hanok village filled with traditional houses from the joseon dynasty., spend a day to explore the beautiful landscapes and unique culture of jeju island ., visit the huinnyeoul culture village in busan, a charming coastal village with picturesque cliffs..

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Your private guide will be ready to meet and greet you at the arrival hall in Seoul. A comfortable private car with an experienced driver will transfer you directly to your hotel. Your guide will help you to check-in.

Begin your journey in Seoul with a visit to Gyeongbokgung Palace , the largest and most beautiful of the five palaces in the city. Learn about its history and enjoy the restored palace buildings.

Continue to Bukchon Hanok Village , a charming neighborhood filled with traditional houses from the Joseon dynasty. Take a stroll through its narrow alleys and immerse yourself in the atmosphere of ancient Korea.

End the day in Insadong, a neighborhood known for its traditional culture and arts scene. Explore the streets, indulge in Korean cuisine, and visit art galleries and shops.

Start the day by walking along the historic Seoul City Wall, also known as Hanyangdo Seong. Enjoy panoramic views of the city and soak in the rich heritage surrounding you.

Head to N Seoul Tower , an iconic landmark offering breathtaking cityscapes. Consider visiting in the evening for a stunning view of Seoul illuminated. Find tranquility at Bongeunsa Temple, located in the heart of the bustling city. Marvel at the Buddhist architecture and immerse yourself in the serenity it offers. Conclude the day with a shopping spree at Myeongdong Shopping Street, a vibrant district known for its fashion, beauty products, and local treats.

Visit the Cheomseongdae Observatory , an ancient structure from the Silla Kingdom representing the lunar calendar. Dive into the history and significance of this observatory.

Immerse yourself in the Buddhist culture at Bulguksa Temple , originally built for peace and prosperity. Explore its serene surroundings and delve into the cultural richness it embodies.

Continue to the Seokguram Grotto , a UNESCO World Heritage site. Marvel at the seated Buddha and appreciate the cultural significance preserved throughout the ages. Conclude the day by exploring the Daereungwon Tomb Complex, home to impressive burial mounds and the Cheonmachong Tomb. Experience the rich archaeological heritage that paints a vivid picture of ancient times.

Begin the day at Huinnyeoul Culture Village in Busan, a charming coastal village with picturesque cliffs. Take a leisurely stroll along the Jeoryeong Coastal Walk and explore the Huinnyeoul Coastal Tunnel for a unique seaside experience.

Ascend to Dalmaji Hill Park for breathtaking panoramic views of Busan and its azure sea. Experience the artistic ambiance reminiscent of Montmartre in France. Conclude the day by exploring more of Busan's attractions and its vibrant atmosphere.

Fly to Jeju and begin the day at Seongsan Ilchulbong , a natural wonder shaped by volcanic eruptions. Witness the spectacular view from the crater and embrace the awe-inspiring landscape. Spend the rest of the day exploring the beautiful attractions and unique culture of Jeju Island.

Start with a visit to Samseonghyeol , a sacred site believed to be the birthplace of three demigods. Explore the serene surroundings and connect with Jeju's captivating folklore.

Immerse yourself in the captivating heritage of Jeju at the Folklore & Natural Museum . Learn about the island's unique culture, history, and natural wonders. Venture to Yongduam Rock, a dragon-shaped rock formation along the coast. Enjoy the breathtaking views of the ocean and take a leisurely stroll along the nearby coastal area.

Indulge in Jeju's culinary delights at Black Pork Street , known for its delectable Jeju black pork. Discover the local gastronomic scene and savor the island's specialty dishes.

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assignment of future rights

Assigning future rights.

1 October 2021 25 October 2009 | Ken Adams

I find that the notion of categories of contract language (considered in detail in chapter 2 of MSCD ) often provides a useful framework for analyzing substantive drafting issues.

Take an issue I was asked about twice recently, once at the ACC annual meeting, once by one of my Penn Law students. It’s routine for contract provisions to assign future rights, but what’s the best way to accomplish that? I see three possibilities; here they are, in skeletal form:

Language of Performance: Acme hereby assigns any Future Rights. Language of Obligation: Acme shall assign any Future Rights. Language of Policy: Acme will be deemed to have assigned any Future Rights.

Which works best? I’m relying on you, dear reader, to enlighten me. For one thing, language of performance would seem the safest option, but is there any problem with assigning now something that doesn’t exist?

By the way, if you’re into licensing, you might find of interest this August 2008 post on granting language and the extensive comments it received.

About the author

Ken Adams is the leading authority on how to say clearly whatever you want to say in a contract. He’s author of  A Manual of Style for Contract Drafting , and he offers online and in-person training around the world. He’s also chief content officer of LegalSifter, Inc., a company that combines artificial intelligence and expertise to assist with review of contracts.

9 thoughts on “Assigning Future Rights”

In the patent world, assignments and employment agreements routinely use language of performance. There is caselaw that specifically distinguishes the obligation (which the obligee may refuse to perform in the future) from the performance. If the inventor is only obligated to assign, but for whatever reason fails to do so, the company never gets the assignment, but if the language was of performance, then it does. So language of performance is strongly preferred, at least in that scenario. I don’t think I’ve ever seen language of policy.

I’m not aware of any caselaw that has a problem with a present assignment of future rights.

Richard Schafer is correct. The language that has been smiled upon by courts is something like: “Inventor shall assign, and does hereby assign, to Company all rights in Future Inventions.”

The obligation language without the performance language only transfers equitable title to future inventions. This is a problem if you happen since equitable title does not get you standing to sue for patent infringement. There are a line of cases stemming from Filmtec Corp. v. Allied-Signal, Inc. (939 F.2d 1568) and Arachnid Inc. v. Merit Industries (939 F.2d 1574) that discuss these issues in detail. I believe there was even a new Fed. Cir. opinion on this topic issued within the last couple months.

Mike: Mixing language of obligation and language of performance in the manner you propose is, in terms of semantics, problematic. Ken

Mike is right. I think there was a more-recent case on this issue (which is probably what Mike is thinking of), but the “big one” last year was DDB Technologies, Inc. v. MLB Advanced Media, L.P., No. 2007-1211 (Fed. Cir. Feb. 13, 2008).

From Mondaq’s summary http://www.mondaq.com/article.asp?articleid=60318 :

In applying federal law, the court looked to the language of the assignment-of-inventions clause in the employment contract, which provided that Barstow “agrees to and does hereby grant and assign” to Schlumberger all inventions falling within the scope of the agreement, together with their related patent rights. The Federal Circuit, citing Speedplay and Filmtec, held that where an employment contract contains such a present grant of rights in future inventions and related patent rights (as opposed to a mere promise to assign in the future), title to the patent transfers to the employer immediately and by operation of law upon the invention’s creation.

From that, it seems clear that choices b and c (obligation and policy) are decidedly inferior to choice a (present assignment of future inventions).

The recent Fed. Cir. case, I believe, was Stanford University v. Roche Molecular Systems, Inc., No. 2008-1509, -1510 (Fed. Cir. revised Oct. 1, 2009), summarized in a blog posting I did earlier this month.

I would also use the formula of “hereby assigns and agrees to assign.” But this is another area where the underlying law needs to be considered before deciding which approach to take.

From the comments above, it seems that the US courts will interpret a present assignment of future rights as coming into effect when the rights come into existence. To my mind, this is a convenient legal fiction, and does not follow normal principles of what words mean. I am not saying this is wrong, but it does require a knowledge of law in order to interpret the words used. This potentially strays into Ken’s “magic words” territory.

Under UK copyright legislation (s91, CDPA 1988 http://www.opsi.gov.uk/acts/acts1988/ukpga_19880048_en_5#pt1-ch5-pb1-l1g91 ), a present assignment of future copyright will take effect when the copyright comes into existence. There is no equivalent to this provision in UK patent legislation.

Ken – I’m not going to disagree with you that the mixing of language types may not be perfect, but that’s the way the language was structured in the early cases and repeatedly approved of by the Fed. Cir. Dare I say “tested.”

Nevertheless, focusing on what the court says in those cases, all you really need is the language of performance: Inventor does hereby assign to Company all rights in all Future Inventions. The courts refer to this as a “present assignment of future expectant interest.”

But, in practice, no one uses the “present assignment of future expectant interest” as the ONLY assignment except as a back-up when someone forgets to follow-up with a “traditional” assignment. There are lots of reasons for this. Generally speaking, the language of the present assignment of future expectant interest is too squishy because of the nature of the “future expectant interest.” So relying solely on the present assignment simply moves the fight to whether a particular invention fits within the definition of a “Future Invention.” But by simply getting a straight-forward, traditional assignment at the time there is “future” invention, you put those questions to rest.

In addition, the present assignment of a future expectant interest doesn’t “record well” at the Patent Office. It’s better to have the straight-forward, traditional assignment that lists with specificity the application and the invention.

Mike: I’m sure you’d be disappointed if I didn’t get all schoolmarmish on you and mention that the construction does hereby assign is archaic. Use instead hereby assigns . Ken

Under continental European legal systems (both French and German oriented) the distinction Mike makes is very clear. A completed transfer (of rights, goods real estate or what have you) requires: (i) a valid title (e.g., obligations to sell vs. purchase), (ii) an agreement to transfer, and (iii) the actual formality of the transfer (e.g., a notarial deed or the factual handing over of the goods. The distinction between (i) and (ii) and its effects is what Mike signals and, as I understand Common Law, what in fact distinguished European legal systems. Indeed the distinction permits non-transfer as a consequence of the seller not transferring/assigning its rights. Under European systems this would not be problematic, since specific performance is preferred over damages, also in case of a transfer of goods or rights. Including the words hereby emphasizes that the act of transfer is effected by the same writing that reflects the sale and purchase. See my blog on this contract drafting matter: http://www.weagree.com/weblog?topic=14

As regards future rights, the new Dutch Civil Code (1992) explicitly allows such transfer, provided that the future rights are sufficiently determined or determinable (which is generally interpreted broadly, so as to cover many aspects).

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Ultimate Checklist for Understanding Contract Assignment Rules

• February 28, 2024
• Moton Legal Group

In contracts, understanding assignment is key. Simply put, an assignment in contract law is when one party (the assignor) transfers their rights and responsibilities under a contract to another party (the assignee). This can include anything from leasing agreements to business operations. But why is this important? It’s because it allows for flexibility in business and personal dealings, a critical component in our world.

Here’s a quick rundown: – Contract Basics: The foundational agreements between parties. – Assignment Importance: Allowing the transfer of obligations and benefits to keep up with life’s changes.

Contracts are a staple in both personal and business worlds, acting as the backbone to many transactions and agreements encountered daily. Understanding the nuances, like assignments, can empower you to navigate these waters with confidence and ease. Whether you’re a business owner in the Southeast looking to expand or an individual managing personal agreements, grasp these basics, and you’re on the right path.

Understanding Contract Assignment

Contract Assignment sounds complicated, right? But, let’s break it down into simple terms. In contracts and legal agreements, knowing about assignment can save you a lot of headaches down the road. Whether you’re a business owner, a landlord, or just someone who deals with contracts, this is for you.

Legal Definition

At its core, contract assignment is about transferring rights or obligations under a contract from one party to another. Think of it as passing a baton in a relay race. The original party (the assignor) hands off their responsibilities or benefits to someone else (the assignee). But, there’s a twist – the race keeps going with the new runner without starting over.

• Contract Law

In contract law, assignment comes into play in various ways. For example, if you’re a freelancer and you’ve agreed to complete a project but suddenly find yourself overbooked, you might assign that contract to another freelancer. This way, the job gets done, and your client is happy. However, not all contracts can be freely assigned. Some require the other party’s consent, and others can’t be assigned at all, especially if they involve personal skills or confidential trust.

Property Law

When it comes to property law, assignment often surfaces in landlord-tenant relationships. Say you’re renting a shop for your business, but you decide to move. If your lease allows it, you might assign your lease to another business. This means they take over your lease, stepping into your shoes, with all the rights and obligations that come with it.

The concept might seem straightforward, but there are important legal requirements and potential pitfalls to be aware of. For instance, an assignment could be prohibited by the contract itself, or it may significantly change the original deal’s terms in a way that’s not allowed. Plus, when you’re dealing with something that requires a unique skill set, like an artist or a consultant, those services typically can’t be passed on to someone else without agreement from all parties involved.

To navigate these complexities, understanding the fundamentals of assignment in contract law and property law is crucial. It ensures that when you’re ready to pass that baton, you’re doing it in a way that’s legal, effective, and doesn’t leave you tripping up before you reach the finish line.

The goal here is to make sure everyone involved understands what’s happening and agrees to it. That way, assignments can be a useful tool to manage your contracts and property agreements, keeping things moving smoothly even when changes come up.

For more detailed exploration on this topic, consider checking the comprehensive guide on Assignment (law)). This resource dives deeper into the nuances of contract assignment, offering insights and examples that can help clarify this complex area of law.

By grasping these basics, you’re well on your way to mastering the art of contract assignment. Whether you’re dealing with leases, business deals, or any agreement in between, knowing how to effectively assign a contract can be a game-changer.

Key Differences Between Assignment and Novation

When diving into contracts, two terms that often cause confusion are assignment and novation . While both deal with transferring obligations and rights under a contract, they are fundamentally different in several key aspects. Understanding these differences is crucial for anyone involved in contract management or negotiation.

Rights Transfer

Assignment involves the transfer of benefits or rights from one party (the assignor) to another (the assignee). However, it’s important to note that only the benefits of the contract can be assigned, not the burdens. For instance, if someone has the right to receive payments under a contract, they can assign this right to someone else.

Novation , on the other hand, is more comprehensive. It involves transferring both the rights and obligations under a contract from one party to a new party. With novation, the original party is completely released from the contract, and a new contractual relationship is formed between the remaining and the new party. This is a key distinction because, in novation, all parties must agree to this new arrangement.

Obligations Transfer

Assignment doesn’t transfer the original party’s obligations under the contract. The assignor (the original party who had the rights under the contract) might still be liable if the assignee fails to fulfill the contract terms.

In contrast, novation transfers all obligations to the new party. Once a novation is complete, the new party takes over all rights and obligations, leaving the original party with no further legal liabilities or rights under the contract.

Written Agreement

While assignments can sometimes be informal or even verbal, novation almost always requires a written agreement. This is because novation affects more parties’ rights and obligations and has a more significant impact on the contractual relationship. A written agreement ensures that all parties are clear about the terms of the novation and their respective responsibilities.

In practice, the need for a written agreement in novation serves as a protection for all parties involved. It ensures that the transfer of obligations is clearly documented and legally enforceable.

For example, let’s say Alex agrees to paint Bailey’s house for $1,000. Later, Alex decides they can’t complete the job and wants Chris to take over. If Bailey agrees, they can sign a novation agreement where Chris agrees to paint the house under the same conditions. Alex is then relieved from the original contract, and Chris becomes responsible for completing the painting job.

Understanding the difference between assignment and novation is critical for anyone dealing with contracts. While both processes allow for the transfer of rights or obligations, they do so in different ways and with varying implications for all parties involved. Knowing when and how to use each can help ensure that your contractual relationships are managed effectively and legally sound.

For further in-depth information and real-life case examples on assignment in contract law, you can explore detailed resources such as Assignment (law) on Wikipedia).

Next, we’ll delve into the legal requirements for a valid assignment, touching on express prohibition, material change, future rights, and the rare skill requirement. Understanding these will further equip you to navigate the complexities of contract assignments successfully.

Legal Requirements for a Valid Assignment

When dealing with assignment in contract law , it’s crucial to understand the legal backbone that supports a valid assignment. This ensures that the assignment stands up in a court of law if disputes arise. Let’s break down the must-know legal requirements: express prohibition, material change, future rights, and rare skill requirement.

Express Prohibition

The first stop on our checklist is to look for an express prohibition against assignment in the contract. This is a clause that outright states assignments are not allowed without the other party’s consent. If such language exists and you proceed with an assignment, you could be breaching the contract. Always read the fine print or have a legal expert review the contract for you.

Material Change

Next up is the material change requirement. The law states that an assignment cannot significantly alter the duties, increase the burdens, or impair the chances of the other party receiving due performance under the contract. For instance, if the contract involves personal services tailored to the specific party, assigning it to someone else might change the expected outcome, making such an assignment invalid.

Future Rights

Another important aspect is future rights . The rule here is straightforward: you can’t assign what you don’t have. This means that a promise to assign rights you may acquire in the future is generally not enforceable at present. An effective assignment requires that the rights exist at the time of the assignment.

Rare Skill Requirement

Lastly, let’s talk about the rare skill requirement . Some contracts are so specialized that they cannot be assigned to another party without compromising the contract’s integrity. This is often the case with contracts that rely on an individual’s unique skills or trust. Think of an artist commissioned for a portrait or a lawyer hired for their specialized legal expertise. In these scenarios, assignments are not feasible as they could severely impact the contract’s intended outcome.

Understanding these legal requirements is pivotal for navigating the complexities of assignment in contract law. By ensuring compliance with these principles, you can effectively manage contract assignments, safeguarding your interests and those of the other contracting party.

For anyone looking to delve deeper into the intricacies of contract law, you can explore detailed resources such as Assignment (law) on Wikipedia).

Moving forward, we’ll explore the common types of contract assignments, from landlord-tenant agreements to business contracts and intellectual property transfers. This will give you a clearer picture of how assignments work across different legal landscapes.

Common Types of Contract Assignments

When we dive into assignment in contract law , we find it touches nearly every aspect of our business and personal lives. Let’s simplify this complex topic by looking at some of the most common types of contract assignments you might encounter.

Landlord-Tenant Agreements

Imagine you’re renting a fantastic apartment but have to move because of a new job. Instead of breaking your lease, you can assign your lease to someone else. This means the new tenant takes over your lease, including rent payments and maintenance responsibilities. However, it’s crucial that the landlord agrees to this switch. If done right, it’s a win-win for everyone involved.

Business Contracts

In the business world, contract assignments are a daily occurrence. For example, if a company agrees to provide services but then realizes it’s overbooked, it can assign the contract to another company that can fulfill the obligations. This way, the project is completed on time, and the client remains happy. It’s a common practice that ensures flexibility and efficiency in business operations.

Intellectual Property

Intellectual property (IP) assignments are fascinating and complex. If an inventor creates a new product, they can assign their patent rights to a company in exchange for a lump sum or royalties. This transfer allows the company to produce and sell the invention, while the inventor benefits financially. However, it’s critical to note that with trademarks, the goodwill associated with the mark must also be transferred to maintain its value.

Understanding these types of assignments helps clarify the vast landscape of contract law. Whether it’s a cozy apartment, a crucial business deal, or a groundbreaking invention, assignments play a pivotal role in ensuring these transitions happen smoothly.

As we navigate through the realm of contract assignments, each type has its own set of rules and best practices. The key is to ensure all parties are on the same page and that the assignment is executed properly to avoid any legal pitfalls.

Diving deeper into the subject, next, we will explore how to execute a contract assignment effectively, ensuring all legal requirements are met and the process runs as smoothly as possible.

How to Execute a Contract Assignment Effectively

Executing a contract assignment effectively is crucial to ensure that all legal requirements are met and the process runs smoothly. Here’s a straightforward guide to help you navigate this process without any hiccups.

Written Consent

First and foremost, get written consent . This might seem like a no-brainer, but it’s surprising how often this step is overlooked. If the original contract requires the consent of the other party for an assignment to be valid, make sure you have this in black and white. Not just a handshake or a verbal agreement. This ensures clarity and avoids any ambiguity or disputes down the line.

Notice of Assignment

Next up, provide a notice of assignment to all relevant parties. This is not just common courtesy; it’s often a legal requirement. It informs all parties involved about the change in the assignment of rights or obligations under the contract. Think of it as updating your address with the post office; everyone needs to know where to send the mail now.

Privity of Estate

Understanding privity of estate is key in real estate transactions and leases. It refers to the legal relationship that exists between parties under a contract. When you assign a contract, the assignee steps into your shoes, but the original terms of the contract still apply. This means the assignee needs to be aware of and comply with the original agreement’s requirements.

Secondary Liability

Lastly, let’s talk about secondary liability . Just because you’ve assigned a contract doesn’t always mean you’re off the hook. In some cases, the original party (the assignor) may still hold some liability if the assignee fails to perform under the contract. It’s essential to understand the terms of your assignment agreement and whether it includes a release from liability for the assignor.

Executing a contract assignment effectively is all about dotting the I’s and crossing the T’s . By following these steps—securing written consent, issuing a notice of assignment, understanding privity of estate, and clarifying secondary liability—you’re setting yourself up for a seamless transition.

The goal is to ensure all parties are fully informed and agreeable to the changes being made. This not only helps in maintaining good relationships but also in avoiding potential legal issues down the line.

We’ll dive into some of the frequently asked questions about contract assignment to clear any lingering doubts.

Frequently Asked Questions about Contract Assignment

When navigating contracts, questions often arise, particularly about the concepts of assignment and novation. Let’s break these down into simpler terms.

What does assignment of a contract mean?

In the realm of assignment in contract law , think of assignment as passing the baton in a relay race. It’s where one party (the assignor) transfers their rights and benefits under a contract to another party (the assignee). However, unlike a relay race, the original party might still be on the hook for obligations unless the contract says otherwise. It’s like handing off the baton but still running alongside the new runner just in case.

Is an assignment legally binding?

Absolutely, an assignment is as binding as a pinky promise in the playground – but with legal muscle behind it. Once an assignment meets the necessary legal criteria (like not significantly changing the obligor’s duties or having express consent if required), it’s set in stone. This means both the assignee and the assignor must honor this transfer of rights or face potential legal actions. It’s a serious commitment, not just a casual exchange.

What is the difference between assignment and novation?

Now, this is where it gets a bit more intricate. If assignment is passing the baton, novation is forming a new team mid-race. It involves replacing an old obligation with a new one or adding a new party to take over an old one’s duties. Crucially, novation extinguishes the old contract and requires all original and new parties to agree. It’s a clean slate – the original party walks away, and the new party steps in, no strings attached.

While both assignment and novation change the playing field of a contract, novation requires a unanimous thumbs up from everyone involved, completely freeing the original party from their obligations. On the other hand, an assignment might leave the original party watching from the sidelines, ready to jump back in if needed.

Understanding these facets of assignment in contract law is crucial, whether you’re diving into a new agreement or navigating an existing one. Knowledge is power – especially when it comes to contracts.

As we wrap up these FAQs, the legal world of contracts is vast and sometimes complex, but breaking it down into bite-sized pieces can help demystify the process and empower you in your legal undertakings.

Here’s a helpful resource for further reading on the difference between assignment and cession.

Now, let’s continue on to the conclusion to tie all these insights together.

Navigating assignment in contract law can seem like a daunting task at first glance. However, with the right information and guidance, it becomes an invaluable tool in ensuring that your rights and obligations are protected and effectively managed in any contractual relationship.

At Moton Legal Group, we understand the intricacies of contract law and are dedicated to providing you with the expertise and support you need to navigate these waters. Whether you’re dealing with a straightforward contract assignment or facing more complex legal challenges, our team is here to help. We pride ourselves on our ability to demystify legal processes and make them accessible to everyone.

The key to successfully managing any contract assignment lies in understanding your rights, the obligations involved, and the potential impacts on all parties. It’s about ensuring that the assignment is executed in a way that is legally sound and aligns with your interests.

If you’re in need of assistance with a contract review, looking to understand more about how contract assignments work, or simply seeking legal advice on your contractual rights and responsibilities, Moton Legal Group is here for you. Our team of experienced attorneys is committed to providing the clarity, insight, and support you need to navigate the complexities of contract law with confidence.

For more information on how we can assist you with your contract review and other legal needs, visit our contract review service page .

In the constantly evolving landscape of contract law, having a trusted legal partner can make all the difference. Let Moton Legal Group be your guide, ensuring that your contractual dealings are handled with the utmost care, professionalism, and expertise. Together, we can navigate the complexities of contract law and secure the best possible outcomes for your legal matters.

Thank you for joining us on this journey through the fundamentals of assignment in contract law. We hope you found this information helpful and feel more empowered to handle your contractual affairs with confidence.

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Assignments: The Basic Law

The assignment of a right or obligation is a common contractual event under the law and the right to assign (or prohibition against assignments) is found in the majority of agreements, leases and business structural documents created in the United States.

As with many terms commonly used, people are familiar with the term but often are not aware or fully aware of what the terms entail. The concept of assignment of rights and obligations is one of those simple concepts with wide ranging ramifications in the contractual and business context and the law imposes severe restrictions on the validity and effect of assignment in many instances. Clear contractual provisions concerning assignments and rights should be in every document and structure created and this article will outline why such drafting is essential for the creation of appropriate and effective contracts and structures.

The reader should first read the article on Limited Liability Entities in the United States and Contracts since the information in those articles will be assumed in this article.

Basic Definitions and Concepts:

An assignment is the transfer of rights held by one party called the “assignor” to another party called the “assignee.” The legal nature of the assignment and the contractual terms of the agreement between the parties determines some additional rights and liabilities that accompany the assignment. The assignment of rights under a contract usually completely transfers the rights to the assignee to receive the benefits accruing under the contract. Ordinarily, the term assignment is limited to the transfer of rights that are intangible, like contractual rights and rights connected with property. Merchants Service Co. v. Small Claims Court , 35 Cal. 2d 109, 113-114 (Cal. 1950).

An assignment will generally be permitted under the law unless there is an express prohibition against assignment in the underlying contract or lease. Where assignments are permitted, the assignor need not consult the other party to the contract but may merely assign the rights at that time. However, an assignment cannot have any adverse effect on the duties of the other party to the contract, nor can it diminish the chance of the other party receiving complete performance. The assignor normally remains liable unless there is an agreement to the contrary by the other party to the contract.

The effect of a valid assignment is to remove privity between the assignor and the obligor and create privity between the obligor and the assignee. Privity is usually defined as a direct and immediate contractual relationship. See Merchants case above.

Further, for the assignment to be effective in most jurisdictions, it must occur in the present. One does not normally assign a future right; the assignment vests immediate rights and obligations.

No specific language is required to create an assignment so long as the assignor makes clear his/her intent to assign identified contractual rights to the assignee. Since expensive litigation can erupt from ambiguous or vague language, obtaining the correct verbiage is vital. An agreement must manifest the intent to transfer rights and can either be oral or in writing and the rights assigned must be certain.

Note that an assignment of an interest is the transfer of some identifiable property, claim, or right from the assignor to the assignee. The assignment operates to transfer to the assignee all of the rights, title, or interest of the assignor in the thing assigned. A transfer of all rights, title, and interests conveys everything that the assignor owned in the thing assigned and the assignee stands in the shoes of the assignor. Knott v. McDonald’s Corp ., 985 F. Supp. 1222 (N.D. Cal. 1997)

The parties must intend to effectuate an assignment at the time of the transfer, although no particular language or procedure is necessary. As long ago as the case of National Reserve Co. v. Metropolitan Trust Co ., 17 Cal. 2d 827 (Cal. 1941), the court held that in determining what rights or interests pass under an assignment, the intention of the parties as manifested in the instrument is controlling.

The intent of the parties to an assignment is a question of fact to be derived not only from the instrument executed by the parties but also from the surrounding circumstances. When there is no writing to evidence the intention to transfer some identifiable property, claim, or right, it is necessary to scrutinize the surrounding circumstances and parties’ acts to ascertain their intentions. Strosberg v. Brauvin Realty Servs., 295 Ill. App. 3d 17 (Ill. App. Ct. 1st Dist. 1998)

The general rule applicable to assignments of choses in action is that an assignment, unless there is a contract to the contrary, carries with it all securities held by the assignor as collateral to the claim and all rights incidental thereto and vests in the assignee the equitable title to such collateral securities and incidental rights. An unqualified assignment of a contract or chose in action, however, with no indication of the intent of the parties, vests in the assignee the assigned contract or chose and all rights and remedies incidental thereto.

More examples: In Strosberg v. Brauvin Realty Servs ., 295 Ill. App. 3d 17 (Ill. App. Ct. 1st Dist. 1998), the court held that the assignee of a party to a subordination agreement is entitled to the benefits and is subject to the burdens of the agreement. In Florida E. C. R. Co. v. Eno , 99 Fla. 887 (Fla. 1930), the court held that the mere assignment of all sums due in and of itself creates no different or other liability of the owner to the assignee than that which existed from the owner to the assignor.

And note that even though an assignment vests in the assignee all rights, remedies, and contingent benefits which are incidental to the thing assigned, those which are personal to the assignor and for his sole benefit are not assigned. Rasp v. Hidden Valley Lake, Inc ., 519 N.E.2d 153, 158 (Ind. Ct. App. 1988). Thus, if the underlying agreement provides that a service can only be provided to X, X cannot assign that right to Y.

Novation Compared to Assignment:

Although the difference between a novation and an assignment may appear narrow, it is an essential one. “Novation is a act whereby one party transfers all its obligations and benefits under a contract to a third party.” In a novation, a third party successfully substitutes the original party as a party to the contract. “When a contract is novated, the other contracting party must be left in the same position he was in prior to the novation being made.”

A sublease is the transfer when a tenant retains some right of reentry onto the leased premises. However, if the tenant transfers the entire leasehold estate, retaining no right of reentry or other reversionary interest, then the transfer is an assignment. The assignor is normally also removed from liability to the landlord only if the landlord consents or allowed that right in the lease. In a sublease, the original tenant is not released from the obligations of the original lease.

Equitable Assignments:

An equitable assignment is one in which one has a future interest and is not valid at law but valid in a court of equity. In National Bank of Republic v. United Sec. Life Ins. & Trust Co. , 17 App. D.C. 112 (D.C. Cir. 1900), the court held that to constitute an equitable assignment of a chose in action, the following has to occur generally: anything said written or done, in pursuance of an agreement and for valuable consideration, or in consideration of an antecedent debt, to place a chose in action or fund out of the control of the owner, and appropriate it to or in favor of another person, amounts to an equitable assignment. Thus, an agreement, between a debtor and a creditor, that the debt shall be paid out of a specific fund going to the debtor may operate as an equitable assignment.

In Egyptian Navigation Co. v. Baker Invs. Corp. , 2008 U.S. Dist. LEXIS 30804 (S.D.N.Y. Apr. 14, 2008), the court stated that an equitable assignment occurs under English law when an assignor, with an intent to transfer his/her right to a chose in action, informs the assignee about the right so transferred.

An executory agreement or a declaration of trust are also equitable assignments if unenforceable as assignments by a court of law but enforceable by a court of equity exercising sound discretion according to the circumstances of the case. Since California combines courts of equity and courts of law, the same court would hear arguments as to whether an equitable assignment had occurred. Quite often, such relief is granted to avoid fraud or unjust enrichment.

Note that obtaining an assignment through fraudulent means invalidates the assignment. Fraud destroys the validity of everything into which it enters. It vitiates the most solemn contracts, documents, and even judgments. Walker v. Rich , 79 Cal. App. 139 (Cal. App. 1926). If an assignment is made with the fraudulent intent to delay, hinder, and defraud creditors, then it is void as fraudulent in fact. See our article on Transfers to Defraud Creditors .

But note that the motives that prompted an assignor to make the transfer will be considered as immaterial and will constitute no defense to an action by the assignee, if an assignment is considered as valid in all other respects.

Enforceability of Assignments:

Whether a right under a contract is capable of being transferred is determined by the law of the place where the contract was entered into. The validity and effect of an assignment is determined by the law of the place of assignment. The validity of an assignment of a contractual right is governed by the law of the state with the most significant relationship to the assignment and the parties.

In some jurisdictions, the traditional conflict of laws rules governing assignments has been rejected and the law of the place having the most significant contacts with the assignment applies. In Downs v. American Mut. Liability Ins. Co ., 14 N.Y.2d 266 (N.Y. 1964), a wife and her husband separated and the wife obtained a judgment of separation from the husband in New York. The judgment required the husband to pay a certain yearly sum to the wife. The husband assigned 50 percent of his future salary, wages, and earnings to the wife. The agreement authorized the employer to make such payments to the wife.

After the husband moved from New York, the wife learned that he was employed by an employer in Massachusetts. She sent the proper notice and demanded payment under the agreement. The employer refused and the wife brought an action for enforcement. The court observed that Massachusetts did not prohibit assignment of the husband’s wages. Moreover, Massachusetts law was not controlling because New York had the most significant relationship with the assignment. Therefore, the court ruled in favor of the wife.

Therefore, the validity of an assignment is determined by looking to the law of the forum with the most significant relationship to the assignment itself. To determine the applicable law of assignments, the court must look to the law of the state which is most significantly related to the principal issue before it.

Assignment of Contractual Rights:

Generally, the law allows the assignment of a contractual right unless the substitution of rights would materially change the duty of the obligor, materially increase the burden or risk imposed on the obligor by the contract, materially impair the chance of obtaining return performance, or materially reduce the value of the performance to the obligor. Restat 2d of Contracts, § 317(2)(a). This presumes that the underlying agreement is silent on the right to assign.

If the contract specifically precludes assignment, the contractual right is not assignable. Whether a contract is assignable is a matter of contractual intent and one must look to the language used by the parties to discern that intent.

In the absence of an express provision to the contrary, the rights and duties under a bilateral executory contract that does not involve personal skill, trust, or confidence may be assigned without the consent of the other party. But note that an assignment is invalid if it would materially alter the other party’s duties and responsibilities. Once an assignment is effective, the assignee stands in the shoes of the assignor and assumes all of assignor’s rights. Hence, after a valid assignment, the assignor’s right to performance is extinguished, transferred to assignee, and the assignee possesses the same rights, benefits, and remedies assignor once possessed. Robert Lamb Hart Planners & Architects v. Evergreen, Ltd. , 787 F. Supp. 753 (S.D. Ohio 1992).

On the other hand, an assignee’s right against the obligor is subject to “all of the limitations of the assignor’s right, all defenses thereto, and all set-offs and counterclaims which would have been available against the assignor had there been no assignment, provided that these defenses and set-offs are based on facts existing at the time of the assignment.” See Robert Lamb , case, above.

The power of the contract to restrict assignment is broad. Usually, contractual provisions that restrict assignment of the contract without the consent of the obligor are valid and enforceable, even when there is statutory authorization for the assignment. The restriction of the power to assign is often ineffective unless the restriction is expressly and precisely stated. Anti-assignment clauses are effective only if they contain clear, unambiguous language of prohibition. Anti-assignment clauses protect only the obligor and do not affect the transaction between the assignee and assignor.

Usually, a prohibition against the assignment of a contract does not prevent an assignment of the right to receive payments due, unless circumstances indicate the contrary. Moreover, the contracting parties cannot, by a mere non-assignment provision, prevent the effectual alienation of the right to money which becomes due under the contract.

A contract provision prohibiting or restricting an assignment may be waived, or a party may so act as to be estopped from objecting to the assignment, such as by effectively ratifying the assignment. The power to void an assignment made in violation of an anti-assignment clause may be waived either before or after the assignment. See our article on Contracts.

Noncompete Clauses and Assignments:

Of critical import to most buyers of businesses is the ability to ensure that key employees of the business being purchased cannot start a competing company. Some states strictly limit such clauses, some do allow them. California does restrict noncompete clauses, only allowing them under certain circumstances. A common question in those states that do allow them is whether such rights can be assigned to a new party, such as the buyer of the buyer.

A covenant not to compete, also called a non-competitive clause, is a formal agreement prohibiting one party from performing similar work or business within a designated area for a specified amount of time. This type of clause is generally included in contracts between employer and employee and contracts between buyer and seller of a business.

Many workers sign a covenant not to compete as part of the paperwork required for employment. It may be a separate document similar to a non-disclosure agreement, or buried within a number of other clauses in a contract. A covenant not to compete is generally legal and enforceable, although there are some exceptions and restrictions.

Whenever a company recruits skilled employees, it invests a significant amount of time and training. For example, it often takes years before a research chemist or a design engineer develops a workable knowledge of a company’s product line, including trade secrets and highly sensitive information. Once an employee gains this knowledge and experience, however, all sorts of things can happen. The employee could work for the company until retirement, accept a better offer from a competing company or start up his or her own business.

A covenant not to compete may cover a number of potential issues between employers and former employees. Many companies spend years developing a local base of customers or clients. It is important that this customer base not fall into the hands of local competitors. When an employee signs a covenant not to compete, he or she usually agrees not to use insider knowledge of the company’s customer base to disadvantage the company. The covenant not to compete often defines a broad geographical area considered off-limits to former employees, possibly tens or hundreds of miles.

Another area of concern covered by a covenant not to compete is a potential ‘brain drain’. Some high-level former employees may seek to recruit others from the same company to create new competition. Retention of employees, especially those with unique skills or proprietary knowledge, is vital for most companies, so a covenant not to compete may spell out definite restrictions on the hiring or recruiting of employees.

A covenant not to compete may also define a specific amount of time before a former employee can seek employment in a similar field. Many companies offer a substantial severance package to make sure former employees are financially solvent until the terms of the covenant not to compete have been met.

Because the use of a covenant not to compete can be controversial, a handful of states, including California, have largely banned this type of contractual language. The legal enforcement of these agreements falls on individual states, and many have sided with the employee during arbitration or litigation. A covenant not to compete must be reasonable and specific, with defined time periods and coverage areas. If the agreement gives the company too much power over former employees or is ambiguous, state courts may declare it to be overbroad and therefore unenforceable. In such case, the employee would be free to pursue any employment opportunity, including working for a direct competitor or starting up a new company of his or her own.

It has been held that an employee’s covenant not to compete is assignable where one business is transferred to another, that a merger does not constitute an assignment of a covenant not to compete, and that a covenant not to compete is enforceable by a successor to the employer where the assignment does not create an added burden of employment or other disadvantage to the employee. However, in some states such as Hawaii, it has also been held that a covenant not to compete is not assignable and under various statutes for various reasons that such covenants are not enforceable against an employee by a successor to the employer. Hawaii v. Gannett Pac. Corp. , 99 F. Supp. 2d 1241 (D. Haw. 1999)

It is vital to obtain the relevant law of the applicable state before drafting or attempting to enforce assignment rights in this particular area.

Conclusion:

In the current business world of fast changing structures, agreements, employees and projects, the ability to assign rights and obligations is essential to allow flexibility and adjustment to new situations. Conversely, the ability to hold a contracting party into the deal may be essential for the future of a party. Thus, the law of assignments and the restriction on same is a critical aspect of every agreement and every structure. This basic provision is often glanced at by the contracting parties, or scribbled into the deal at the last minute but can easily become the most vital part of the transaction.

As an example, one client of ours came into the office outraged that his co venturer on a sizable exporting agreement, who had excellent connections in Brazil, had elected to pursue another venture instead and assigned the agreement to a party unknown to our client and without the business contacts our client considered vital. When we examined the handwritten agreement our client had drafted in a restaurant in Sao Paolo, we discovered there was no restriction on assignment whatsoever…our client had not even considered that right when drafting the agreement after a full day of work.

One choses who one does business with carefully…to ensure that one’s choice remains the party on the other side of the contract, one must master the ability to negotiate proper assignment provisions.

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Assignment of Rights Agreement: Everything You Need to Know

An assignment of rights agreement refers to a situation in which one party, known as the assignor, shifts contract rights to another party, known as assignee. 3 min read updated on July 26, 2024

An assignment of rights agreement refers to a situation in which one party, known as the assignor, shifts contract rights to another party. The party taking on the rights is known as the assignee.

An Assignment of Rights Agreement

The following is an example of an assignment of rights agreement. Dave decides to buy a bicycle from John for $100 and after agreeing on the price, Dave and John draw up a written agreement. Let's suppose that there will be a one week wait before the bicycle is ready for delivery to Dave and before anything is passed between them.

Meanwhile, John accepts that he will transfer his right to be paid $100 from Dave to Rob, in exchange for Rob paying John $90 immediately. Let's assume that John's motivation is an immediate need for cash. In this context, John is regarded as the assignor and Rob is the assignee.

John is the assignor as he is giving the assignment to Rob and Rob is the assignee because he is acquiring the assignment from John. To put it simply, the assignee is the party who gets something. In this case, Rob will receive $100.

Rules of Assignments

Assignments frequently occur in contracts. It's important to note the following points:

• The assignor (e.g. John) is accountable according to the contract unless the parties make an agreement that states otherwise.
• This means that if Dave does not receive the bicycle, he can sue John for it.
• Assignments are allowed in almost every type of agreement unless the contract includes an explicit ban on assignments or unless a specific exception is applicable.
• The assignor does not need to speak to the other contract party in order to create the assignment. For example, John would not need to ask Dave if John can transfer his right to be paid to Rob.

Exceptions Where a Contract Cannot be Assigned

• Some exceptions dictate that a contract cannot be assigned .
• Unenforceable assignments include the following: a personal services agreement, changing the contract duties, changing the material provisions of the agreement (e.g. time, amount, location, etc.).
• An example of a personal services agreement, which cannot be assigned, would be if you decided to employ a particular professional writer to write a book for you.
• That writer would not be allowed to take your payment and then give the work to another writer because you employed that particular writer to write the book, rather than someone else.
• Some kinds of assignments have to be in writing in order to be enforceable such as assignments of actual property (e.g. selling your house), loans, or debts.
• It's best to look at the statute of frauds for more information on the kinds of agreements that must be in writing.

Delegations and Novations

A delegation is very similar to an assignment in terms of what it involves. A delegation takes place when a party moves his or her obligations (or liabilities) under an agreement to a different party. Assignments, on the other hand, involve the transfer of rights.

If the parties in our previous example had created a novation , Rob would be entirely accountable to Dave and John would be clear of responsibility. A novation replaces the earliest party with a new party.

Contract Assignment

An Assignment Agreement can also be called a Contract Assignment. Another example of this would be if you're a contractor who needs assistance finishing a job. You could give those tasks and rights to a subcontractor, but only if the original agreement does not prohibit the assignment of these rights and responsibilities.

Creating an Assignment Agreement

In an Assignment Agreement, it is important to include details such as:

• The name of the person assigning the responsibilities (known as the assignor)
• The name of the of the party who is taking the rights and responsibilities (the assignee)
• The other party to the first agreement (known as the obligor)
• The name of the agreement and its expiration date
• Whether the first contract necessitates the obligor's approval before assigning rights
• The date of the obligor's consent
• When the contract will be put into effect
• Which state's laws will regulate the contract

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• Assignment of Rights Example
• Assignment of Contract Rights
• Assignment of Rights and Obligations Under a Contract
• Partial Assignment of Contract
• Assignment Contract Law
• What Is the Definition of Assigns
• Assignment Law
• Assignment Of Contracts
• Legal Assignment
• Delegation vs Assignment

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Contract Assignments

(This may not be the same place you live)

  What is a Contract Assignment?

In a contract assignment, one of the two parties to a contract may transfer their right to the other’s performance to a third party. This is known as “contract assignment.” Generally, all rights under a contract may be assigned. A provision in the contract that states the contract may not be assigned usually refers to the delegation of the assignor’s (person who assigns) duties under that contract, not their rights under the contract. 

In modern law, the phrase “assignment of contract” usually means assignment of both rights and duties under a contract.

Who are the Various Parties Involved in a Contract Assignment?

How is a contract assignment created, when is a contract assignment prohibited, which parties are liable to each other in a contract assignment, are there issues with multiple assignments, should i hire a lawyer for contract assignments.

In a contract, there are two parties to the agreement, X and Y. The parties may agree to let X assign X’s rights to a third party . Once the third party enters the picture, each party has a special name. For instance, suppose X, a seller of bookmarks, contracts with Y, a purchaser of bookmarks. Y desires to have Y’s right to X’s performance (the sale of bookmarks on a monthly basis) to another person. 

This third person, Z, is called the assignee. X is called the obligor , and Y is called the assignor , since Y has assigned its right to X’s performance . X, the obligor, is obligated to continue to perform its duties under the agreement.

There are no “magic words” needed to create an assignment. The law simply requires that the would-be assignor have an intent to immediately and completely transfer their rights in the agreement. In addition, writing is typically not required to create an assignment. As long as X and Y both adequately understand what right is being assigned, an assignment is created. 

Words that indicate a transfer is to take place suffice, such as “I intend to transfer my rights under this agreement,” or, “I intend to give my rights to Z,” or “I intend to confer an assignment on Z.” In addition,consideration,which is a bargained-for exchange required for a contract to be valid, is not required for assignment.

In certain instances, an assignment of contract rights can be prohibited. If the contract contains a clause prohibiting assignment of “the contract,” without specifying more, the law construes this language as barring only delegation of the assignor’s duties, not their rights. If the assignment language states “assignment of contractual rights are prohibited,” the obligor may sue for damages if the assignor attempts to assign the agreement. If the contract language states that attempts to assign “will be void,” the parties can bar assignment.of rights.

Under modern contract law, the phrase “I assign the contract” is usually interpreted to mean that one is assigning rights and duties. What is an assignment of duties? An assignment of duties occurs where Y, called the obligor or delegator, promises to perform for X, the obligee. Y then delegates their duty to perform to Z, the delegate. Under the law, most duties can be delegated. 

There are exceptions to this rule. Delegation can be prohibited when:

• The duties to be performed involve personal judgment and special skill (e.g., a portrait, creation of a custom-made dress). 
• “Personal judgment” is the exercise of some kind of superior judgment when it comes to determining how, when, or where to do something. Examples of individuals who exercise personal judgment include talent scouts and financial advisors.  Special skill is the unique ability to create a good or perform a service. A delegator can be prohibited from delegating duties when it is that specific delegator’s services are sought. For example, if the services of a specific famous chef are sought, and the original agreement was entered into on the understanding that the chef was hired for their specific talent, the delegator may not delegate the services;
• The assignment fundamentally changes risks or responsibilities under the agreement;
• The assignment is over future rights associated with a future contract that does not currently exist;
• Delegation would increase the obligation of the obligee. For example, if a shoe manufacturer contracts to deliver soles to a store in the same town as the shoe factory, the other party cannot assign the delivery to a different store in another state. Doing so would impose a greater obligation on the obligee than was originally contemplated;
• The obligee had placed special trust in the delegator. For example, assume that you have hired a patent attorney, based on that attorney’s significant skill and expertise, to obtain a valuable patent. You have placed special trust in this person, hiring them instead of other patent attorneys, because of their unique expertise. In such a situation, the attorney may not delegate his duties to another attorney (delegate), since the attorney was hired because of one person’s special capabilities;
• The delegation is of a promise to repay a debt; or
• The contract itself restricts or prohibits delegation. If the contract states, “any attempt to delegate duties under this contract is void,” a delegation will not be permitted.

In a contract involving assignment of rights, the assignee may sue the obligor. This is because the assignee, once the assignee has been assigned rights, is entitled to performance under the contract. If the obligor had a defense that existed in the original contract between obligor and assignor, the obligor may assert that defense against the assignee. Examples of such defenses include the original contract was not valid because of lack of consideration, or because there was never a valid offer or acceptance).

An assignee may also sue an assignor. Generally, if an assignment is made for consideration,it is irrevocable. Assignments not made for consideration, but under which an obligor has already performed, are also irrevocable. If an assignor attempts to revoke an irrevocable assignment,the assignee may sue for “wrongful revocation.” 

In circumstances involving delegation of duties,an obligee must accept performance from the delegate of all duties that may be delegated. The delegator remains liable on the agreement. Therefore, the obligee may sue the delegator for nonperformance by the delegate. The obligee may sue the delegate for nonperformance, but can only require the delegate to perform if there has been an assumption by the delegate. An assumption by the delegate is a promise that the delegate will perform the delegated duty, which promise is supported by consideration. 

Assignments that are not supported by consideration are revocable. If an initial assignment is revocable, a subsequent assignment can revoke it. If a first assignment is irrevocable, because consideration was present,the first assignment will usually prevail over a subsequent assignment. This means the person who can claim the assignment was first made to them will prevail over someone who claims a subsequent assignment. 

If, however, the second person paid value for the assignment, and entered into the assignment without knowing of the first assignment, the “subsequent”assignee is entitled to proceeds the first judgment against the obligor (the original party who still must perform), in the event such a judgment is issued,

If you have an issue with assignment of rights or duties under a contract, you should contact a contract lawyer  for advice. An experienced business lawyer near you can review the facts of your case, advise you of your rights, and represent you in court proceedings.

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Kluwer Patent Blog

A cautionary tale for assignment of rights in u.s. patents.

In Omni MedSci, Inc. v. Apple Inc. , ___ F.4th ___, Nos. 2020-1715, -1716 (Fed. Cir. Aug. 2, 2021), the U.S. Court of Appeals for the Federal Circuit held that the University of Michigan’s technology transfer bylaws did not constitute an automatic assignment of a professor’s patent rights. This decision has important implications for the drafting of employee agreements as they relate to the ownership of inventions, which in the U.S. vest initially in the inventors.

In 2012, Dr. Islam, a tenured professor at University of Michigan (“UM”), took an unpaid leave-of-absence in order to start a new company, Omni. During his leave, Dr. Islam filed several provisional patent applications that he expected to form the backbone of the IP portfolio for the new company. In 2013, after resuming work at UM, Dr. Islam assigned the issued patents to Omni.

Omni subsequently brought suit against Apple for infringement of two patents descended from the provisional applications filed by Dr. Islam during his leave. Apple moved to dismiss alleging that Omni lacked standing because UM was the real patent owner. Apple argued that UM’s bylaws automatically transferred legal title to the patents to UM, leaving Dr. Islam with no rights to assign to Omni. The district court rejected Apple’s arguments and denied the motion; in a split decision, the Federal Circuit affirmed.

Did UM’s Bylaws Effectuate an Automatic Assignment?

Like all professors at UM, Dr. Islam signed an employment agreement when he was first hired in 1995 in which he agreed to abide by UM’s bylaws.  Those bylaws provided that patents “resulting from activities which have received no support … from the University shall be the property of the inventor,” whereas patents based on activities supported by the University “shall be the property of the University.” The question for the court was whether the bylaws created an obligation to assign or constituted an automatic assignment of the patents at issue, which would have automatically transferred title to UM and left Dr. Islam with no rights in the invention to assign to Omni.

The distinction between automatic assignments and obligations to assign is nicely illustrated by the Stanford v. Roche case. There, Professor Holodniy, a Stanford professor, conducted research at Cetus pursuant to a confidentiality agreement. After his return to Stanford, Professor Holodniy assigned the resulting patent applications to Stanford. When Stanford subsequently sued Roche, Roche raised an ownership defense based on the language in the confidentiality agreement with Cetus. The Cetus agreement stated that Holodniy “will assign and do[es] hereby assign” his rights to Cetus for inventions made “as a consequence of [his] access” to Cetus. By contrast, Holodiny’s employment agreement with Stanford stated that he “agree[d] to assign” rights in inventions resulting from his employment. The Federal Circuit held that the Cetus contract, by virtue of its present-tense “do[es] hereby assign” language, automatically assigned rights to Cetus, but the Stanford contract’s future-tense language did not.

In Omni , the Federal Circuit observed that UM’s bylaws did “not unambiguously constitute either a present automatic assignment or a promise to assign in the future.” The express purpose of the bylaws was, however, to determine under which conditions employees were obliged to assign their inventions to UM and when they would own it themselves. Moreover, after disclosing an invention to the Office of Technology Transfer, employees at UM were asked to sign an Invention Report, which referenced the bylaws and provided: “As required, I/we hereby assign.” The Federal Circuit contrasted the “unambiguous present assignment” in the Invention Report with the language in the bylaws, noting that “[e]ach case in which [the] court found a present automatic assignment examined contractual language with a present tense executing verb. Such present-tense active verbs effectuate a present action.” Thus, the Federal Circuit concluded that the bylaws were “most naturally read as a statement of intended disposition and a promise of a potential future assignment, not as a present automatic transfer.”

Takeaways: How to Play it Safe

While the Federal Circuit noted that there are no “magic words,” the following language has been held to constitute an automatic assignment: “the Employee assigns all of his or her right, interest, or title in any invention to the Employer” ( SiRF Tech v. Int’l Trade Comm’n ); “agrees to and does hereby grant and assign” ( DDB Techs. ); “hereby conveys, transfers, and assigns” ( Speedplay v. Bebop ); and “agrees to grant and does hereby grant” ( FilmTec Corp. v. Allied-Signal ). By contrast, passive verbs in indefinite or future tense are less likely to effectuate a present assignment.  Indeed, agreements providing that an invention “shall be the property of … and all rights thereto will be assigned” to an employer have been held not to be an automatic assignment, but rather, an obligation to assign in the future. By following the language of these precedents, employers and employees can ensure their agreements provide for the desired ownership of inventions.

Concluding Remarks

In dissent, Judge Newman argued that the holding “overturns decades of unchallenged understanding and implementation of the University’s employment agreement and policy documents.” Whether or not this is true, institutions and corporations would be well-advised to review the language used in their employment agreements to ensure it achieves the intended purpose.

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• > Intellectual Property Licensing and Transactions
• > Ownership and Assignment of Intellectual Property

Book contents

• Intellectual Property Licensing and Transactions
• Copyright page
• Acknowledgments
• Introduction
• Part I Introduction to Intellectual Property Licensing
• 1 The Business of Licensing
• 2 Ownership and Assignment of Intellectual Property
• 3 The Nature of an Intellectual Property License
• 4 Implied Licenses and Unwritten Transactions
• 5 Confidentiality and Pre-license Negotiations
• Part II License Building Blocks
• Part III Industry- and Context-Specific Licensing Topics
• Part IV Advanced Licensing Topics

2 - Ownership and Assignment of Intellectual Property

from Part I - Introduction to Intellectual Property Licensing

Published online by Cambridge University Press:  21 June 2022

Chapter 2 covers issues surrounding the assignment of IP (i.e., fixing its ownership as a prerequisite to transacting in it), and contrasts ownership with licensing of IP. It specifically covers the assignment of rights in patents, copyrights, trademarks and trade secrets, including within the employment context (i.e., shop rights , individuals hired to invent and works made for hire). The Supreme Court decision in Stanford v. Roche is considered at length. The chapter concludes with a thorough discussion of the issues presented by joint ownership of IP.

Summary Contents

2.1 Assignments of Intellectual Property, Generally 19

2.2 Assignment of Copyrights and the Work Made for Hire Doctrine 22

2.3 Assignment of Patent Rights 27

2.4 Trademark Assignments and Goodwill 37

2.5 Assignment of Trade Secrets 41

2.6 Joint Ownership 42

The owner of an intellectual property (IP) right, whether a patent, copyright, trademark, trade secret or other right, has the exclusive right to exploit that right. Ownership of an IP right is thus the most effective and potent means for utilizing that right. But what does it mean to “own” an IP right and how does a person – an individual or a firm – acquire ownership of it? This chapter explores transfers and assignments of IP ownership, first in general, and then with respect to special considerations pertinent to patents, copyrights and trademarks. Assignments and transfers of IP licenses , another important topic, are covered in Section 13.3 , and attempts to prohibit an assignor of IP from later challenging the validity of transferred IP (through a contractual no-challenge clause or the common law doctrine of “assignor estoppel”) are covered in Chapter 22 .

2.1 Assignments of Intellectual Property, Generally

Once it is in existence, an item of IP may be bought, sold, transferred and assigned much as any other form of property. Like real and personal property, IP can be conveyed through contract, bankruptcy sale, will or intestate succession, and can change hands through any number of corporate transactions such as mergers, asset sales, spinoffs and stock sales.

The following case illustrates how IP rights will be treated by the courts much as any other assets transferred among parties. In this case, the court must interpret a “bill of sale,” the document listing assets conveyed in a particular transaction. Just as with bushels of grain or tons of steel, particular IP rights can be listed in a bill of sale and the manner in which they are listed will determine what the buyer receives.

Systems Unlimited v. Cisco Systems

228 fed. appx. 854 (11th cir. 2007) (cert. denied).

Following the settlement of a dispute between Systems Unlimited, Inc. and Cisco Systems, Inc. over the ownership of certain intellectual property, Cisco agreed to covey the property to Systems. In the resulting bill of sale, Cisco:

granted, bargained, sold, transferred and delivered, and by these presents does grant, bargain, sell, transfer and deliver unto [Systems], its successor and assigns, the following:

Any and all of [Cisco]’s right, title and interest in any copyrights, patents, trademarks, trade secrets and other intellectual property of any kind associated with any software, code or data, including without limitation host controller software and billing software, whether embedded or in any other form (including without limitations, disks, CDs and magnetic tapes), and including any and all available copies thereof and any and all books and records related thereto by [Cisco]

Cisco never delivered [copies of] any of the software to Systems. Alleging that it had been damaged by the non-delivery, Systems sued Cisco for breaching the bill of sale contract and for violating the attendant obligations to deliver the software under the Uniform Commercial Code.

Systems contends that the district court erred in granting summary judgment in favor of Cisco because: (1) the plain language of the bill of sale required Cisco to deliver the software; (2) the bill of sale, when read in conjunction with other contemporaneous agreements, required delivery; and (3) the UCC, which governs the bill of sale, requires that all goods be delivered at a reasonable time. Systems is wrong on each point.

The bill of sale is interpreted in accord with its plain language absent some ambiguity. Here, the parties agree that the bill of sale is clear and unambiguous.

The bill of sale provides that Cisco will “grant, bargain, sell, transfer and deliver unto [Systems] … [a]ny and all of [Cisco]’s right, title and interest in any copyrights, patents, trademarks, trade secrets and other intellectual property of a kind associated with any software, code or data.” As the district court explained, this language unambiguously means that Cisco was required by the bill of sale to transfer to Systems all of its rights in intellectual property associated with certain software and data. There is no mention in the plain language of the contract itself of Cisco being obligated to transfer the actual software, and we will not imply any such obligation absent some good reason under law.

Systems says there are two good reasons to imply an obligation by Cisco to transfer the software. First, Systems argues that the bill of sale must be interpreted in conjunction with the settlement agreement between Systems and Cisco and other documents relating to the intellectual property. These other agreements, Systems claims, include an obligation by Cisco to deliver the software with any conveyance of intellectual property.

Assuming without deciding that the other agreements include language requiring Cisco to deliver the software, they are not relevant here because Systems has never alleged Cisco violated these other agreements. Systems’ complaint alleges only a violation of the bill of sale contract, and there is no obligation in that contract to deliver the software. The bill of sale does not reference or incorporate any other agreement.

To get around this point, Systems argues that “when instruments relate to the same matters, are between the same parties, and made part of substantially one transaction, they are to be taken together.” It is true that this is one of the canons for construing a contract under California law. But it is also true that this canon, as with most others, is inapplicable where the contract that is alleged to have been breached is unambiguous. Here, the language of the bill of sale is unambiguous. Thus, there is no need to apply any canons of construction.

Systems also argues that the UCC imposes a duty on Cisco to deliver the software. We will assume without deciding that Systems’ reading of the UCC is correct. Even so, the provisions of the UCC only apply to contracts that deal predominately with “transactions in goods.” The sale of intellectual property, which is what is involved here, is not a transaction in goods. Thus, the UCC does not apply. Accordingly, the plain language of the bill of sale governs and, as the district court held, it does not include a provision requiring Cisco to deliver any software.

Notes and Questions

1. IP and the UCC . The court in Systems v. Cisco holds that IP licenses and other transactions are not governed by Article 2 of the UCC, which pertains to sales of goods. In Section 3.4 we will discuss whether and to what degree Article 2 applies to IP licenses . But this case relates not to a license, but to a “sale” of software. Why doesn’t UCC Article 2 apply? Should it?

2. Delivery of what ? What does this language from the bill of sale refer to, if not delivery of software: “including any and all available copies thereof”? Does this language represent a drafting mistake by Systems’ attorney? Or an intentional omission by Cisco?

3. The need for software . Why is Systems so upset that Cisco has allegedly refused to deliver the software in question? How useful is an assignment of copyright and other IP to someone who is not in possession of the software code that is copyrighted? Has Cisco “pulled a fast one” on Systems and the court, or is there a valid business reason that could justify Cisco’s failure to deliver the software ?

4. Statute of frauds . Assignments of copyrights, patents and trademarks must all be in writing (17 U.S.C. § 204(a), 35 U.S.C. § 261, 15 U.S.C. § 1060(3)). Why? This requirement does not apply to most licenses, which may be oral. Can you think of a good reason for this distinction?

5. State law and mutual mistake . Despite the federal statutory nature of patents, courts have long held that the question of who holds title to a patent is a matter of state contract law. Footnote 1 This issue arose in an interesting way in Schwendimann v. Arkwright Advanced Coating, Inc ., 959 F.3d 1065 (Fed. Cir. 2020). In Schwendimann , the plaintiff’s former company purported to assign her a patent application in 2003. Due to a clerical error by the law firm handling the matter, the assignment document filed with the patent office listed the wrong patent name and number. In 2011, the plaintiff filed an action asserting the patent against an alleged infringer. The defendant, discovering the incorrect assignment document from 2003, moved to dismiss on the ground that the plaintiff did not hold any enforceable rights at the time she filed suit and thus lacked standing. The district court, interpreting applicable state law, held that the 2003 assignment was the result of a “mutual mistake of fact” that did not accurately reflect the intent of the parties. Accordingly, the erroneous document could be reformed and was sufficient to support standing to bring suit. The Federal Circuit affirmed. Judge Reyna dissented, reasoning that, irrespective of the district court’s later reformation of the erroneous assignment, the plaintiff’s failure to own the patent at the time her suit was filed necessarily barred her suit under Article III of the Constitution. Which of these positions do you find more persuasive? Notwithstanding the holding in favor of the plaintiff, is there a claim for legal malpractice against the law firm in question ?

2.2 Assignment of Copyrights and the Work Made for Hire Doctrine

Under § 201(a) of the Copyright Act, copyright ownership “vests initially in the author or authors of the work.” A copyright owner may assign any of its exclusive rights, in full or in part, to a third party. The assignment generally must be in writing and signed by the owner of the copyright or his or her authorized agent (17 U.S.C. § 204(a)).

If a work of authorship is prepared by an employee within the scope of his or her employment, then the work is a “work made for hire” and the employer is considered the author and owner of the copyright (17 U.S.C. § 201(b)). In addition, if a work is not made by an employee but is “specially ordered or commissioned,” it will be considered a work made for hire if it falls into one of nine categories enumerated in § 101(2) of the Act: a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, or an atlas. Commissioned works that do not fall into one of these nine categories (for example, software) are not automatically considered to be works made for hire, and copyright must be assigned explicitly through a separate assignment or sale agreement.

Warren v. Fox Family Worldwide, Inc.

328 f.3d 1136 (9th cir. 2003).

HAWKINS, Circuit Judge.

In this dispute between plaintiff-appellant Richard Warren (”Warren”) and defendants-appellees Fox Family Worldwide (“Fox”), MTM Productions (“MTM”), Princess Cruise Lines (“Princess”), and the Christian Broadcasting Network (“CBN”), Warren claims that defendants infringed the copyrights in musical compositions he created for use in the television series “Remington Steele.” Concluding that Warren has no standing to sue for infringement because he is neither the legal nor beneficial owner of the copyrights in question, we affirm the district court’s Rule 12 dismissal of Warren’s complaint.

Warren and Triplet Music Enterprises, Inc. (“Triplet”) entered into the first of a series of detailed written contracts with MTM concerning the composition of music for “Remington Steele.” This agreement stated that Warren, as sole shareholder and employee of Triplet, would provide services by creating music in return for compensation from MTM. Under the agreement, MTM was to make a written accounting of all sales of broadcast rights to the series and was required to pay Warren a percentage of all sales of broadcast rights to the series made to third parties not affiliated with ASCAP or BMI. These agreements were renewed and re-executed with slight modifications in 1984, 1985 and 1986.

Warren brought suit in propria persona against Fox, MTM, CBN, and Princess, alleging copyright infringement, breach of contract, accounting, conversion, breach of fiduciary duty, breach of covenants of good faith and fair dealing, and fraud.

Warren claims he created approximately 1,914 musical works used in the series pursuant to the agreements with MTM; that MTM and Fox have materially breached their obligations under the contracts by failing to account for or pay the full amount of royalties due Warren from sales to parties not affiliated with ASCAP or BMI; and that MTM and Fox infringed Warren’s copyrights in the music by continuing to broadcast and license the series after materially breaching the contracts. As to the other defendants, Warren claims that CBN and Princess infringed his copyrights by broadcasting “Remington Steele” without his authorization. Warren seeks damages, an injunction, and an order declaring him the owner of the copyrights at issue.

Defendants argu[ed] that Warren’s infringement claims should be dismissed for lack of standing because he is neither the legal nor beneficial owner of the copyrights. The district court dismissed Warren’s copyright claims without leave to amend and dismissed his state law claims without prejudice to their refiling in state court, holding that Warren lacked standing because the works were made for hire, and because a creator of works for hire cannot be a beneficial owner of a copyright in the work. Warren appeals.

The first agreement [between the parties], signed on February 25, 1982, states that MTM contracted to employ Warren “to render services to [MTM] for the television pilot photoplay now entitled ‘Remington Steele.’” It also is clear that the parties agreed that MTM would “own all right, title and interest in and to [Warren’s] services and the results and proceeds thereof, and all other rights granted to [MTM] in [the Music Employment Agreement] to the same extent as if … [MTM were] the employer of [Warren].” The Music Employment Agreement provided:

As [Warren’s] employer for hire, [MTM] shall own in perpetuity, throughout the universe, solely and exclusively, all rights of every kind and character, in the musical material and all other results and proceeds of the services rendered by [Warren] hereunder and [MTM] shall be deemed the author thereof for all purposes.

Figure 2.1 Warren claimed that he created 1,914 musical works for the popular 1980s TV series Remington Steele .

The parties later executed contracts almost identical to these first agreements in June 1984, July 1985, and November 1986. As the district court noted, these subsequent contracts are even more explicit in defining the compositions as “works for hire.” Letters that Warren signed accompanying the later Music Employment Agreements provided: “It is understood and agreed that you are supplying [your] services to us as our employee for hire … [and] [w]e shall own all right, title and interest in and to [your] services and the results and proceeds thereof, as works made for hire.”

That the agreements did not use the talismanic words “specially ordered or commissioned” matters not, for there is no requirement, either in the Act or the caselaw, that work-for-hire contracts include any specific wording. In fact, in Playboy Enterprises v. Dumas , 53 F.3d 549 (2d Cir. 1995), the Second Circuit held that legends stamped on checks were writings sufficient to evidence a work-for-hire relationship where the legend read: “By endorsement, payee: acknowledges payment in full for services rendered on a work-made-for-hire basis in connection with the Work named on the face of this check, and confirms ownership by Playboy Enterprises, Inc. of all right, title and interest (except physical possession), including all rights of copyright, in and to the Work.” Id. at 560. The agreements at issue in the instant case are more explicit than the brief statement that was before the Second Circuit.

In this case, not only did the contracts internally designate the compositions as “works made for hire,” they provided that MTM “shall be deemed the author thereof for all purposes.” This is consistent with a work-for-hire relationship under the Act, which provides that “the employer or other person for whom the work was prepared is considered the author.” 17 U.S.C. § 201(b).

Warren argues that the use of royalties as a form of compensation demonstrates that this was not a work-for-hire arrangement. While we have not addressed this specific question, the Second Circuit held in Playboy that “where the creator of a work receives royalties as payment, that method of payment generally weighs against finding a work-for-hire relationship.” 53 F.3d at 555. However, Playboy clearly held that this factor was not conclusive. In addition to noting that the presence of royalties only “generally” weighs against a work-for-hire relationship, Playboy cites Picture Music, Inc. v. Bourne, Inc ., 457 F.2d 1213, 1216 (2d Cir. 1972), for the proposition that “[t]he absence of a fixed salary … is never conclusive.” 53 F.3d at 555. Further, the payment of royalties was only one form of compensation given to Warren under the contracts. Warren was also given a fixed sum “payable upon completion.” That some royalties were agreed upon in addition to this sum is not sufficient to overcome the great weight of the contractual evidence indicating a work-for-hire relationship.

Warren also argues that because he created nearly 2,000 musical works for MTM, the works were not specially ordered or commissioned. However, the number of works at issue has no bearing on the existence of a work-for-hire relationship. As the district court noted, a weekly television show would naturally require “substantial quantities of verbal, visual and musical content.”

The agreements between Warren and MTM conclusively show that the musical compositions created by Warren were created as works for hire, and Warren is therefore not the legal owner of the copyrights therein.

1. Employee v. Contractor . In Warren v. Fox the musical compositions created by Warren fell into one of the nine categories of “specially commissioned works” that qualify as works made for hire under § 101(2) of the Copyright Act (audiovisual works), even if they were not made by employees of the commissioning party. They will thus be classified as works made for hire so long as they can be shown to have been “specially commissioned” – the focus of the debate in Warren . A slightly different question arose in Community for Creative Non-Violence v. Reid , 490 U.S. 730 (1989). In that case Reid, a sculptor, was engaged by a nonprofit organization, CCNV, to create a memorial “to dramatize the plight of the homeless.” Sculpture is not one of the nine enumerated categories of commissioned works. Thus, even if Reid’s sculpture were “specially commissioned” (as it probably was), it would not be classified as a work made for hire under § 101 unless Reid were considered to be an employee of CCNV. CCNV argued that it exercised a certain degree of control over the subject matter of the sculpture, making it appropriate to classify Reid as its employee. The Court disagreed:

Reid is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in his own studio in Baltimore, making daily supervision of his activities from Washington practicably impossible. Reid was retained for less than two months, a relatively short period of time. During and after this time, CCNV had no right to assign additional projects to Reid. Apart from the deadline for completing the sculpture, Reid had absolute freedom to decide when and how long to work. CCNV paid Reid $15,000, a sum dependent on completion of a specific job, a method by which independent contractors are often compensated. Reid had total discretion in hiring and paying assistants. Creating sculptures was hardly regular business for CCNV. Indeed, CCNV is not a business at all. Finally, CCNV did not pay payroll or Social Security taxes, provide any employee benefits, or contribute to unemployment insurance or workers’ compensation funds.

Does the structure of the works made for hire doctrine under § 101(2) of the Copyright Act make sense? Why should specially commissioned works be considered works for hire only if they fall into one of the nine enumerated categories? Why is a musical composition treated so differently than a sculpture?

2. Manner of compensation . The form of compensation received by the author is mentioned in both Warren v. Fox and CCNV v. Reid . Why is this detail significant to the question of works made for hire? Are the courts’ conclusions with respect to compensation consistent between these two cases?

3. Software contractors and assignment . For a variety of professional, financial and tax-planning reasons, software developers often work as independent contractors and are not hired as employees of the companies for which they create software. And, like the sculpture in CCNV v. Reid , software is not one of the nine enumerated categories of works under § 101(2) of the Copyright Act. Thus, even if it is specially commissioned, software will not be considered a work made for hire. As a result, companies that use independent contractors to develop software must be careful to put in place copyright assignment agreements with those contractors. And because contractors often sit and work beside company employees with very little to distinguish them, neglecting to take these contractual precautions is one of the most common IP missteps made by fledgling and mature software companies alike. If you were the general counsel of a new software company, how would you deal with this issue?

4. Recordation . Section 205 of the Copyright Act provides for recordation of copyright transfers with the Copyright Office. Recordation of transfers is not required, but provides priority if the owner attempts to transfer the same copyrighted work multiple times:

§ 205(d) Priority between Conflicting Transfers.—As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice … Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.

As students of real property will surely observe, this provision resembles a “race-notice” recording statute under state law. As such, the second transferee of a copyright may prevail over a prior, unrecorded transferee if the second transferee records first without notice of the earlier transfer. Note also that this provision is applicable only to copyrights that are registered with the Copyright Office.

5. Statutory termination of assignments . Sections 203 and 304 of the Copyright Act provide that any transfer of a copyright can be revoked by the transferor between 35 and 40 years after the original transfer was made. Footnote 2 This remarkable and powerful right is irrevocable and cannot be contractually waived or circumvented. It was intended to enable authors who were young and unrecognized when they first granted rights to more powerful publishers to profit from the later success of their works. For example, in 1938 Jerry Siegel and Joseph Shuster, the creators of the Superman character, sold their rights to the predecessor of DC Comics for $130. Siegel and Shuster both died penniless in the 1990s, while Superman earned billions for his corporate owners.

Though Sections 203 and 304 were originally directed to artists, writers and composers, these provisions apply across the board to all copyrighted works including software and technical standards documents. The possibility that an original developer of Microsoft Windows could suddenly pull the plug on millions of existing licenses is somewhat ameliorated because the reversion does not apply to works made for hire or derivative works. Nevertheless, one must ask why these reversionary rights apply to software and technical documents at all. If such works of authorship are excluded as works made for hire under Section 101(2), why shouldn’t they also be excluded from Sections 203/304? Footnote 3 Is there any justification for allowing developers of copyrighted “technology” products to terminate assignments made decades ago?

6. Divisibility of copyright . Prior to the Copyright Act of 1976, copyright ownership was not divisible. That is, the owner of a copyright, say in a book, could not assign the exclusive right to produce a film based on that book to a third party. The right to produce a film could be licensed to a third party, but an attempted assignment of the right would potentially be invalid or treated as a license. Footnote 4 But today, under 17 U.S.C. § 201(d)(2), “Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred … and owned separately.” What do you think was the rationale for this change in the law? Why would, say, a film studio prefer to “own” the right to produce a film based on a book rather than have a license to do so?

Figure 2.2 The creators of the Superman character died in near poverty while the Man of Steel went on to form a multi-billion-dollar franchise. Sections 203 and 304 of the US Copyright Act were enacted to enable authors and their heirs to terminate any copyright assignment or license between 35 and 40 years after originally made in order to permit them to share in the value of their creations .

2.3 Assignment Of Patent Rights

As with other IP rights, patents, patent applications and inventions may be assigned. Patent rights initially vest in inventors who are, by definition, individuals. Unlike copyright, there is no work made for hire doctrine under US patent law. However, if an employee is “hired to invent” – that is, to perform tasks intended to result in an invention – then the employee may have a legal duty to assign the resulting invention to his or her employer. Footnote 5

Unfortunately, the “hired to invent” doctrine is murky and inconsistently applied. Footnote 6 Thus, most employers today contractually obligate their employees to assign rights in inventions and patents to them when made within the scope of their employment and/or using the employer’s resources or facilities. This requirement exists in the private sector, at nonprofit universities and research institutions, as well as government agencies. The initial assignment from an inventor to his or her employer is often filed during prosecution of a patent on a form provided by the Patent and Trademark Office. If such an assignment is not filed, the inventor’s employer obtains no rights in an issued patent other than so-called “shop rights” that allow the employer to use the patented invention on a limited basis. Footnote 7

Beyond the initial assignment from the inventor(s), the owner of a patent may assign it to a third party as any other property right. The following case turns on whether an inventor assigned his rights to his employer at the time the invention was conceived, or when the patent was issued.

Filmtec Corporation v. Allied-Signal Inc.

939 f.2d 1568 (fed. cir. 1991).

PLAGER, CIRCUIT JUDGE

Allied-Signal Inc. and UOP Inc. (Allied), defendants-appellants, appeal from the preliminary injunction issued by the district court. The trial court enjoined Allied from “making, using or selling, and actively inducing others to make use or sell TFCL membrane in the United States, and from otherwise infringing claim 7 of United States Patent No. 4,277,344 [’344].” Because of serious doubts on the record before us as to who has title to the invention and the ensuing patent, we vacate the grant of the injunction and remand for further proceedings.

The application which ultimately issued as the ‘344 patent was filed by John E. Cadotte on February 22, 1979. The patent claims a reverse osmosis membrane and a method for using the membrane to reduce the concentration of solute molecules and ions in solution. Cadotte assigned his rights in the application and any subsequently issuing patent to plaintiff-appellee FilmTec. This assignment was duly recorded in the United States Patent and Trademark Office. Defendant-appellant Allied manufactured a reverse osmosis membrane and FilmTec sued Allied for infringing certain claims of the ’344 patent.

John Cadotte was one of the four founders of FilmTec. Prior to founding FilmTec, Cadotte and the other founders were employed in various responsible positions at the North Star Division of Midwest Research Institute (MRI), a not-for-profit research organization. MRI was principally engaged in contract research, much of it for the United States (Government), and much of it involving work in the field of reverse osmosis membranes.

The evidence indicates that the work at MRI in which Cadotte and the other founders were engaged was being carried out under contract (the contract) to the Government. The contract provided that MRI

agrees to grant and does hereby grant to the Government the full and entire domestic right, title and interest in [any invention, discovery, improvement or development (whether or not patentable) made in the course of or under this contract or any subcontract … thereunder].

It appears that sometime between the time FilmTec came into being in 1977 and the time Cadotte submitted his patent application in February of 1979, he made the invention that led to the ’344 patent. As we will explain, just when in that period the invention was made is critical.

Cadotte left MRI in January of 1978. Cadotte testified that he conceived his invention the month after he left MRI. Allied disputes this, and alleges that Cadotte conceived his invention and formed the reverse osmosis membrane of the ’344 patent earlier—in July of 1977 or at least by November of 1977 when he allegedly produced an improved membrane.

Allied alleges that the evidence establishes that the contract between MRI and the Government grants to the Government “all discoveries and inventions made within the scope of their [i.e., MRI’s employees] employment,” and that the invention claimed in the ’344 patent was made by Cadotte while employed by MRI. From this Allied reasons that rights in the invention must be with the Government and therefore Cadotte had no rights to assign to FilmTec. If FilmTec lacks title to the patent, FilmTec has no standing to bring an infringement action under the ’344 patent. FilmTec counters by arguing that the trial court was correct in concluding that the most the Government would have acquired was an equitable title to the ’344 patent, which title would have been made void under 35 U.S.C. § 261 by the subsequent assignment to FilmTec from Cadotte.

The parties agree that Cadotte was employed by MRI and that the contract between MRI and the Government contains a grant of rights to inventions made pursuant to the contract. However, the record does not reflect whether the employment agreement between Cadotte and MRI either granted or required Cadotte to grant to MRI the rights to inventions made by Cadotte. Allied argues that Cadotte’s inventions were assigned nevertheless to MRI. Allied points to the provision in the contract between MRI and the Government in which MRI warrants that it will obligate inventors to assign their rights to MRI.

While this is not conclusive evidence of a grant of or a requirement to grant rights by Cadotte, it raises a serious question about the nature of the title, if any, in FilmTec. FilmTec apparently did not address this issue at the trial, and there is no indication in the opinion of the district court that this gap in the chain of ownership rights was considered by the court.

Between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest. An assignment of an expectant interest can be a valid assignment.

Figure 2.3 FilmTec reverse osmosis membrane filter.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee, and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the ’344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the ’344 patent and standing to bring the present action.

The district court was of the view that if the Government was the assignee from Cadotte through MRI, the Government would have acquired at most an equitable title, and that legal title would remain in Cadotte. The legal title would then have passed to FilmTec by virtue of the later assignment, pursuant to Sec. 261 of the [Patent Act]. Sigma Eng’g v. Halm Instrument , 33 F.R.D. 129 (E.D.N.Y. 1963).

But Sigma , even if it were binding precedent on this court, does not stretch so far. The issue in Sigma was whether the plaintiff, assignee of the patent rights of the inventors, was the real party in interest such as to be able to maintain the instant action for patent infringement. Defendant claimed that the inventors’ employer had title to the invention by virtue of the employment contract which obligated the inventors to transfer all patent rights to inventions made while in its employ. As the court expressly noted, no such transfers were made, however, and the court considered any possible interest held by the employer in the invention to be in the nature of an equitable claim.

In our case, the contract between MRI and the Government did not merely obligate MRI to grant future rights, but expressly granted to the Government MRI’s rights in any future invention. Ordinarily, no further act would be required once an invention came into being; the transfer of title would occur by operation of law. If a similar contract provision existed between Cadotte and MRI, as MRI’s contract with the Government required, and if the invention was made before Cadotte left MRI’s employ, as the trial judge seems to suggest, Cadotte would have no rights in the invention or any ensuing patent to assign to FilmTec.

Because of the district court’s view of the title issue, no specific findings were made on either of these questions. As a result, we do not know who held legal title to the invention and to the patent application and therefore we do not know if FilmTec could make a sufficient legal showing to establish the likelihood of success necessary to support a preliminary injunction.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. This is an application of the common law bona fide purchaser for value rule.

Figure 2.4 Schematic showing possible assignment pathways for Cadotte’s invention.

Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

Both the common law rule and the statute contemplate that the subsequent purchaser be exactly that—a transferee who pays valuable consideration, and is without notice of the prior transfer. The trial judge, with reference to FilmTec’s rights as a subsequent purchaser, stated simply that “FilmTec is a subsequent purchaser from Cadotte for independent consideration. There is no evidence presented to imply that FilmTec was on notice of any previous assignment.” The court concluded that, even if the MRI contract automatically transferred title to the Government, such assignment is not enforceable at law as it was never recorded.

“the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute.”

Since this matter will be before the trial court on remand, it may be useful for us to clarify what is required before FilmTec can properly be considered a subsequent purchaser entitled to the protections of Sec. 261. In the first place, FilmTec must be in fact a purchaser for a valuable consideration. This requirement is different from the classic notion of a purchaser under a deed of grant, where the requirement of consideration was a formality, and the proverbial peppercorn would suffice to have the deed operate under the statute of uses. Here the requirement is that the subsequent purchaser, in order to cut off the rights of the prior purchaser, must be more than a donee or other gratuitous transferee. There must be in fact valuable consideration paid so that the subsequent purchaser can, as a matter of law, claim record reliance as a premise upon which the purchase was made. That, of course, is a matter of proof.

In addition, the subsequent transferee/assignee—FilmTec in our case—must be without notice of any such prior assignment. If Cadotte’s contract with MRI contained a provision assigning any inventions made during the course of employment either to MRI or directly to the Government, Cadotte would clearly be on notice of the provisions of his own contract. Since Cadotte was one of the four founders of FilmTec, and the other founders and officers were also involved at MRI, FilmTec may well be deemed to have had actual notice of an assignment. Given the key roles that Cadotte and the others played both at MRI and later at FilmTec, at a minimum FilmTec might be said to be on inquiry notice of any possible rights in MRI or the Government as a result of Cadotte’s work at MRI. Thus once again, the key to FilmTec’s ability to show a likelihood of success on the merits lies in the relationship between Cadotte and MRI.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction and for further proceedings consistent with this opinion.

VACATED AND REMANDED .

1. Recording of title . As noted in Section 2.1 , Note 4, assignments of patents may be recorded at the Patent and Trademark Office. As provided in 35 U.S.C. § 261,

An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

This provision is a modified form of the familiar “race-notice” recording statute that applies to real estate transactions. Footnote 8 Unlike the comparable provision of the Copyright Act (17 U.S.C. § 205(d), discussed in Section 2.2 ), the second assignee of a patent may prevail over a prior, unrecorded assignee if the second assignee records first without notice of the earlier assignment unless the first assignee records within three months of the first assignment. An assignee of a patent thus has a three-month grace period in which to record its transfer without fear of being superseded by a second assignment. What is the reason for this three-month grace period, which exists neither in copyright nor real property law?

2. Inquiry notice . The court in FilmTec borrows the notion of “inquiry notice” from the law of real property recording. What is inquiry notice? Footnote 9 How does it differ from actual notice and constructive notice?

3. Present v. Future Grants of Patent Rights . The court in FilmTec explains that “the contract between MRI and the Government did not merely obligate MRI to grant future rights, but expressly granted to the Government MRI’s rights in any future invention. Ordinarily, no further act would be required once an invention came into being; the transfer of title would occur by operation of law.” That is, disregarding MRI’s failure to record the transfer, MRI’s present grant of rights in a future patent to the government (assuming that MRI had previously obtained the requisite rights from Cadotte) would automatically convey those rights to the government as soon as an invention was made.

A similar fact pattern arose in Stanford v. Roche , 563 U.S. 776 (2011) (reproduced, in part, in Section 14.1 ). In that case, a Stanford researcher who was obligated under Stanford’s policies to assign inventions to Stanford also signed an agreement assigning his future invention rights to Cetus Corp. while visiting the company to use its equipment. The Federal Circuit ruled for Cetus, reasoning that, under FilmTec , the researcher’s present assignment of future patent rights to Cetus automatically became effective when a patent application was filed, leaving nothing for him to assign to the holder of a future promise of assignment (i.e., Stanford). Stanford successfully sought certiorari on different grounds (whether the Bayh–Dole Act overrode these contractual provisions), and the Supreme Court affirmed the judgment for Cetus without reaching the assignment issue.

However, Justices Breyer and Ginsburg dissented (joined by Justice Sotomayor, who concurred in the judgment) on the ground that the Federal Circuit’s 1991 rule in FilmTec seemingly contradicted earlier precedent. Citing one 1867 treatise and a 1958 law review note, Justice Breyer proposed that before FilmTec , “a present assignment of future inventions (as in both contracts here) conveyed equitable, but not legal, title” and that this equitable interest “grants equitable enforcement to an assignment of an expectancy but demands a further act, either reduction to possession or further assignment of the right when it comes into existence.” In other words, the researcher’s present “assignment” of his future patent rights to Cetus would give Cetus an equitable claim to seek “legal title” once an invention existed or a patent application was filed. On this basis, Justice Breyer concludes,

Under this rule, both the initial Stanford and later Cetus agreements would have given rise only to equitable interests in Dr. Holodniy’s invention. And as between these two claims in equity, the facts that Stanford’s contract came first and that Stanford subsequently obtained a postinvention assignment as well should have meant that Stanford, not Cetus, would receive the rights its contract conveyed.

Despite Justice Breyer’s dissatisfaction with the holdings of FilmTec and Stanford v. Roche , their approach to future assignments still appears to be the law. Footnote 10 Which approach do you think most accurately reflects the intentions of the parties? What policy ramifications might each rule have ?

4. Shall versus does. The result in Stanford v. Roche turns on the wording of two competing legal instruments – Dr. Holodniy’s assignments to Cetus and Stanford. As noted by the Federal Circuit in the decision below, Holodniy’s initial agreement with Stanford constituted a mere promise to assign his future patent rights to Stanford, whereas his agreement with Cetus acted as a present assignment of his future patent rights to Cetus, thus giving the patent rights to Cetus (583 F.3d 832, 841–842 (2009)). As explained by Justice Breyer in his dissent: Footnote 11

In the earlier agreement—that between Dr. Holodniy and Stanford University—Dr. Holodniy said, “I agree to assign … to Stanford … that right, title and interest in and to … such inventions as required by Contracts and Grants.” In the later agreement—that between Dr. Holodniy and the private research firm Cetus—Dr. Holodniy said, “I will assign and do hereby assign to Cetus, my right, title, and interest in” here relevant “ideas” and “inventions.” The Federal Circuit held that the earlier Stanford agreement’s use of the words “agree to assign,” when compared with the later Cetus agreement’s use of the words “do hereby assign,” made all the difference. It concluded that, once the invention came into existence, the latter words meant that the Cetus agreement trumped the earlier, Stanford agreement. That, in the Circuit’s view, is because the latter words operated upon the invention automatically, while the former did not.

What could Stanford have done to avoid this problem? How do you think the result of Stanford v. Roche affected the wording of university patent policies and assignment documents in general? Footnote 12 Given this holding, should an assignment agreement ever be phrased in any way other than “Assignor hereby grants to Assignee … ”? Was Dr. Holodniy himself at fault in this situation? What, if anything, should he have done differently ?

5. Breadth of employee invention assignments . As noted in the introduction to this section, employers who wish to obtain assignments of the inventions created by their employees must do so pursuant to written assignment agreements. But how broad can these assignments be? In Whitewater West Indus. v. Alleshouse , 2020 U.S. App. LEXIS 36394 (Fed. Cir. 2020), the Federal Circuit reviewed an employee assignment agreement that contained the following provision:

a. Assignment: In consideration of compensation paid by Company, Employee agrees that all right, title and interest in all inventions, improvements, developments, trade-secret, copyrightable or patentable material that Employee conceives or hereafter may make or conceive , whether solely or jointly with others:

(a) with the use of Company’s time, materials, or facilities; or (b) resulting from or suggested by Employee’s work for Company; or (c) in any way connected to any subject matter within the existing or contemplated business of Company

shall automatically be deemed to become the property of Company as soon as made or conceived, and Employee agrees to assign to Company, its successors, assigns, or nominees, all of Employee’s rights and interests in said inventions, improvements, and developments in all countries worldwide. Employee’s obligation to assign the rights to such inventions shall survive the discontinuance or termination of this Agreement for any reason.

This provision, on its face, appears to require not only that current employees assign their inventions to the company (a typical provision in employment agreements), but also that former employees continue to make such assignments indefinitely in the future, so long as such inventions are “in any way connected to any subject matter within the existing or contemplated business of Company.” Needless to say, this provision is quite aggressive.

Richard Alleshouse, a designer of water park attractions, was hired by Wave Loch, Inc., a company operating in California, in October 2007. In September 2008, Alleshouse signed a Covenant Against Disclosure and Covenant Not to Compete containing the above assignment clause. In 2012, Alleshouse left Wave Loch to cofound a new company in the same line of business. There, he continued to develop and patent features of surfing-based water park attractions. In 2017, Wave Loch (through its successor Whitewater West) sued Alleshouse for breach of contract and correction of inventorship, seeking to acquire title to three patents on which Alleshouse was listed as a co-inventor following his departure from Wave Loch.

In evaluating Wave Loch’s claim, the Federal Circuit considered California Business and Professions Code § 16600, which states: “Except as provided in this chapter, every contract by which anyone is restrained from engaging in a lawful profession, trade, or business of any kind is to that extent void.” This statutory provision has traditionally been interpreted to prohibit companies from imposing noncompetition restrictions on former employees. In this case, however, the Federal Circuit extended its reach to prohibit assignments of future IP rights not based on the company’s own IP. In assessing the over-breadth of the provision, the court noted that:

No trade-secret or other confidential information need have been used to conceive the invention or reduce it to practice for the assignment provision to apply. The obligation is unlimited in time and geography. It applies when Mr. Alleshouse’s post-employment invention is merely “suggested by” his work for Wave Loch. It applies, too, when his post-employment invention is “in any way connected to any subject matter” that was within Wave Loch’s “existing or contemplated” business when Mr. Alleshouse worked for Wave Loch.

Under these circumstances, the court invalidated the assignment provision, reasoning that it “imposes [too harsh a] penalty on post-employment professional, trade, or business prospects—a penalty that has undoubted restraining effect on those prospects and that a number of courts have long held to invalidate certain broad agreements with those effects.”

Interestingly, Wave Loch cited Stanford v. Roche in its defense, arguing that the court there interpreted § 16600 to uphold the invention assignment provision used by Cetus. The Federal Circuit rejected this argument, however, stating that in Stanford , unlike Whitewater , “there was simply no evidence of a restraining effect on [the researcher’s] ability to engage in his profession.” But as pointed out by Professor Dennis Crouch, “The weak point of the Federal Circuit’s decision [in Whitewater ] is that it is seemingly contrary to its own prior express statement [in Stanford ] that ‘section 16600 [applies] to employment restrictions on departing employees, not to patent assignments.’” Footnote 13

Which view do you find more persuasive? Should Alleshouse have been required to assign his post-departure patents to Wave Loch? What would the result be in a state that did not have an analog to California’s § 16600? Should this question be resolved under Federal patent law ?

6. When does an assignable invention exist ? Another twist relating to employee invention assignments involves the point in time when an “invention” actually comes into existence and can thus be assigned. In Bio-Rad Labs, Inc. v. ITC and 10X Genomics (Fed. Cir. 2021), two employees each agreed to assign to Bio-Rad, their employer, any IP, including ideas, discoveries and inventions, that he “conceives, develops or creates” during his employment. Both employees left Bio-Rad to form 10X Genomics, which competed with Bio-Rad. Four months later, 10X began to file patent applications on technology that the employees had worked on while at Bio-Rad. The employees claimed that, while their work at 10X was related to their work at Bio-Rad, they did not actually “conceive” the inventions leading to their patents until after they had joined 10X. The Federal Circuit, applying California employment and contract law, agreed, holding that the assignment clause in the Bio-Rad agreements related to “intellectual property” and that an unprotectable “idea,” even if later leading to a patentable invention, was not IP and could thus not be assigned. That is, the court found that the assignment duty under the agreement was “limited to subject matter that itself could be protected as intellectual property.” If this is the case, then why did the Bio-Rad agreement expressly call for the assignment of “ideas” in addition to inventions and other forms of IP?

Figure 2.5 Richard Alleshouse was the product manager for Wave Loch’s FlowRider attraction, shown here as installed on the upper deck of a Royal Caribbean cruise ship.

Professor Dennis Crouch contrasts Bio-Rad with Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd ., 964 F.3d 1365 (Fed. Cir. 2020), in which unpatentable, pre-conception ideas did give rise to a claim for ownership of patentable inventions conceived later. Footnote 14 Which approach do you think most accurately reflects the intentions of the parties? How would you draft an assignment agreement to unambiguously cover pre-conception ideas, or to avoid such assignments?

7. Indivisibility of patent rights . Unlike copyrights (see Section 2.2 , Note 5), the rights “within” a patent are indivisible. That is, the owner of a patent may not assign one claim of the patent to another, nor may it assign the exclusive right to make or sell one particular type of product. As set out by the Supreme Court in Waterman v. MacKenzie , 138 U.S. 252 (1891), a patent owner’s only options are to assign (1) the whole patent, (2) an undivided part or share of the whole patent, or (3) the patent rights “within and throughout a specified part of the United States” (a rarity these days). Thus, when a patent owner, under option (2), assigns “an undivided part” of a patent, the assignee receives an undivided interest in the whole, becoming a tenant in common with the original owner and any other co-owners (the rights and duties of such joint patent owners are discussed in greater detail in Section 2.5 ). Why do patents and copyrights differ in this regard? Should patents be “divisible” like copyrights? What advantages or disadvantages might arise from such divisibility?

8. Past infringement . The general rule in the United States is that “one seeking to recover money damages for infringement of [a] patent … must have held the legal title to the patent during the time of the infringement.” Arachnid, Inc. v. Merit Indus., Inc . 939 F.2d 1574, 1579 (Fed. Cir. 1991). Thus, the assignee of a patent only obtains the right to sue for infringement that occurred while it owned the patent. As the Supreme Court held a century and a half ago, “It is a great mistake to suppose that the assignment of a patent carries with it a transfer of the right to damages for an infringement committed before such assignment.” Moore v. Marsh , 74 U.S. (7 Wall.) 515 (1868). This rule often acts as a trap for the unwary (see, e.g., Nano-Second Technology Co., Ltd. v. Dynaflex International , 2013 U.S. Dist. LEXIS 62611 (N.D. Cal.) (language purporting to assign “the entire right, title and interest” to a patent failed to convey the right to sue for past infringement)). As a result, if the assignee wishes to sue for infringement occurring prior to the date of the assignment, the assignment must contain an express conveyance of this right. Does this rule still make sense today? Why might an assignor of a patent not wish to assign the right to sue for past infringement to a purchaser of the patent? What language would you use in an assignment clause to convey this important right to the assignee ?

Problem 2.1

The Brokeback Institute (BI) is a leading medical research center. The IP assignment clause in its standard consulting agreement reads as follows:

Consultant hereby assigns to BI all of its ownership, right, title, and interest in and to all Work Product. An Invention will be considered “Work Product” if it fits any of the following three criteria: (1) it is developed using equipment, supplies, facilities, or trade secrets of BI; (2) it results from Consultant’s work for BI; or (3) it relates to BI’s business or its current or anticipated research and development.

How would you react to and/or revise this clause if you represented a consultant who was one of the following:

a. A software developer being engaged by BI for a six-month, full-time engagement to update BI’s medical records software database.

b. A Nobel laureate biochemist with a faculty appointment at Harvard who will be visiting BI to teach a three-week summer class to freshman pre-med students.

c. A brain researcher from Oxford who has been invited to serve on the scientific advisory board of a BI grant-funded neurosurgery project, which will involve participation in one telephonic board meeting per calendar quarter.

d. A pathologist who will advise BI on the design of its new pathology lab, which is expected to require fifty hours of work over the next year.

Problem 2.2

Help out Stanford University by drafting an IP assignment clause applicable to its faculty members, including those who occasionally visit other institutions and companies to use their equipment and facilities.

2.4 Trademark Assignments and Goodwill

Like copyrights and patents, trademarks may be assigned by their owners. But as IP rights, trademarks differ in important respects from copyrights and patents. Most fundamentally, as discussed in the following case, an assignment of a registered trademark is invalid unless it is accompanied by an assignment of the associated business goodwill.

Sugar Busters LLC v. Brennan

177 f.3d 258 (5th cir. 1999).

KING, Chief Judge

Plaintiff-appellee Sugar Busters, L.L.C. (plaintiff) is a limited liability company organized by three doctors and H. Leighton Steward, who co-authored and published a book entitled “ SUGAR BUSTERS! Cut Sugar to Trim Fat ” in 1995. In “ SUGAR BUSTERS! Cut Sugar to Trim Fat ,” the authors recommend a diet plan based on the role of insulin in obesity and cardiovascular disease. The authors’ premise is that reduced consumption of insulin-producing food, such as carbohydrates and other sugars, leads to weight loss and a more healthy lifestyle. The 1995 publication of “ SUGAR BUSTERS! Cut Sugar to Trim Fat ” sold over 210,000 copies, and in May 1998 a second edition was released. The second edition has sold over 800,000 copies and remains a bestseller.

Brennan then co-authored “ SUGAR BUST For Life! ,” which was published in May 1998. “ SUGAR BUST for Life ” states on its cover that it is a “cookbook and companion guide by the famous family of good food,” and that Brennan was “Consultant, Editor, Publisher, [and] Sales and Marketing Director for the original, best-selling ‘ Sugar Busters!™ Cut Sugar to Trim Fat .’” Approximately 110,000 copies of “ SUGAR BUST for Life !” were sold between its release and September 1998.

Plaintiff filed this suit in the United States District Court for the Eastern District of Louisiana on May 26, 1998. Plaintiff sought to enjoin [Brennan] from selling, displaying, advertising or distributing “ SUGAR BUST for Life !,” to destroy all copies of the cookbook, and to recover damages and any profits derived from the cookbook.

The mark that is the subject of plaintiff’s infringement claim is a service mark that was registered in 1992 by Sugarbusters, Inc., an Indiana corporation operating a retail store named “Sugarbusters” in Indianapolis that provides products and information for diabetics. The “SUGARBUSTERS” service mark, registration number 1,684,769, is for “retail store services featuring products and supplies for diabetic people; namely, medical supplies, medical equipment, food products, informational literature and wearing apparel featuring a message regarding diabetes.” Sugarbusters, Inc. sold “any and all rights to the mark” to Thornton-Sahoo, Inc. on December 19, 1997, and Thornton-Sahoo, Inc. sold these rights to Elliott Company, Inc. (Elliott) on January 9, 1998. Plaintiff obtained the service mark from Elliott pursuant to a “servicemark purchase agreement” dated January 26, 1998. Under the terms of that agreement, plaintiff purchased “all the interests [Elliott] owns” in the mark and “the goodwill of all business connected with the use of and symbolized by” the mark.

The district court found that the mark is valid and that the transfer of the mark to plaintiff was not “in gross” because

[t]he plaintiff has used the trademark to disseminate information through its books, seminars, the Internet, and the cover of plaintiff’s recent book, which reads “ Help Treat Diabetes and Other Diseases .” Moreover, the plaintiff is moving forward to market and sell its own products and services, which comport with the products and services sold by the Indiana corporation. There has been a full and complete transfer of the good will related to the mark …

A trademark is merely a symbol of goodwill and has no independent significance apart from the goodwill that it symbolizes. Therefore, a trademark cannot be sold or assigned apart from the goodwill it symbolizes. The sale or assignment of a trademark without the goodwill that the mark represents is characterized as in gross and is invalid.

The purpose of the rule prohibiting the sale or assignment of a trademark in gross is to prevent a consumer from being misled or confused as to the source and nature of the goods or services that he or she acquires. Use of the mark by the assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing, whether used by one person or another. Therefore, if consumers are not to be misled from established associations with the mark, [it must] continue to be associated with the same or similar products after the assignment.

Plaintiff’s purported service mark in “SUGARBUSTERS” is valid only if plaintiff also acquired the goodwill that accompanies the mark; that is, “the portion of the business or service with which the mark is associated.” [Brennan] claim[s] that the transfer of the “SUGARBUSTERS” mark to plaintiff was in gross because “[n]one of the assignor’s underlying business, including its inventory, customer lists, or other assets, were transferred to [plaintiff].” [Brennan’s] view of goodwill, however, is too narrow. Plaintiff may obtain a valid trademark without purchasing any physical or tangible assets of the retail store in Indiana – the transfer of goodwill requires only that the services be sufficiently similar to prevent consumers of the service offered under the mark from being misled from established associations with the mark.

In concluding that goodwill was transferred, the district court relied … on its finding that “plaintiff is moving forward to market and sell its own products and services, which comport with the products and services sold by the Indiana corporation.” Steward testified, however, that plaintiff does not have any plans to operate a retail store, and plaintiff offered no evidence suggesting that it intends to market directly to consumers any goods it licenses to carry the “SUGAR BUSTERS!” name. Finally, we are unconvinced by plaintiff’s argument that, by stating on the cover of its diet book that it may “[h]elp treat diabetes and other diseases” and then selling some of those books on the Internet, plaintiff provides a service substantially similar to a retail store that provides diabetic supplies. We therefore must conclude that plaintiff’s purported service mark is invalid.

1. Acquiring goodwill . The Servicemark Purchase Agreement between Elliott and Sugar Busters, LLC clearly purported to transfer “the goodwill of all business connected with the use of and symbolized by” the SUGARBUSTERS mark. Given this language, why did the Fifth Circuit find that the goodwill of the business was not transferred? In view of the court’s holding, how would you advise a client if it desires to acquire a trademark but not to conduct the same business as the prior owner of the mark?

2. Consumer confusion . Generally, trademark infringement cases hinge on whether an alleged infringer is causing consumer confusion as to the source of goods or services. A similar theory applies to the Fifth Circuit’s rule on in gross trademark assignments: If the new goods sold under the mark are significantly different than the old goods sold under the mark, then consumers might be confused as to the source and nature of the goods being sold. Why is this the case? What is the harm in this confusion?

3. Effect of an in gross transfer . Professor Barton Beebe notes, in discussing the Sugar Busters case, that “In most situations … the assignee may claim exclusive rights in the mark, but the basis of and the priority date for those rights stems only from the assignee’s new use of the mark, not from any previous use by the assignor.” Footnote 15 This conclusion is sensible – without the accompanying goodwill, the acquirer gets nothing from the original mark owner, but may begin to use the mark afresh and may build up goodwill based on its own use. But does this reasoning correspond with the holding of Sugar Busters ? Note the date on which the plaintiff purported to acquire the trademark from Elliott (January 26, 1998), when Brennan’s allegedly infringing book was released (May 26, 1998) and when the plaintiff brought suit against Brennan (May 26, 1998). Even if the plaintiff acquired no trademark rights at all from Elliott, wouldn’t it have acquired some enforceable rights between January and May, 1998? And what about any common law trademark rights that the plaintiff accrued from the 1995 publication of its first Sugar Busters book?

4. Toward free transfer ? Professor Irene Calboli argues that the rule requiring transfer of goodwill with trademarks is an outdated trap for the unwary that should be abolished. She hypothesizes a transaction in which a new company acquires the Coca-Cola Company, observing all the proper formalities, and then decides to apply the famous Coca-Cola mark not to carbonated colas, but to salty snacks. Will consumers be confused? Possibly, but the new owner is perfectly within its rights to apply the mark to its snack products rather than colas. Would consumers be worse off if the transaction documentation had neglected to reflect a transfer of goodwill? Calboli reasons that

the rule of assignment “with goodwill” is failing to meet its purpose and … rather than focusing on a sterile and confusing requirement, the courts should focus directly on the assignee’s use of the mark. If this use is likely to deceive the public, the courts should declare the assignments at issue void. Yet, if no likelihood of confusion or deception results from the transaction, the courts should allow the assignments to stand. Footnote 16

Do you agree? Does the prohibition on in gross transfers of trademarks serve any useful purpose today? Footnote 17

5. Recordation . The recordation requirements for trademarks are similar to those for patents. As provided under 15 U.S.C. § 1060(3):

An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.

As with patents, this provision is a modified form of “race-notice” recording statute. The second assignee of a trademark may prevail over a prior, unrecorded assignee if the second assignee records first without notice of the earlier assignment unless the first assignee records within three months of the first assignment.

6. Security interests and mortgages . The recording statute for patents 35 U.S.C. § 261 refers to “a subsequent purchaser or mortgagee” of a patent, whereas the statute for trademarks refers only to “a subsequent purchaser.” Why does the trademark statute omit mention of mortgagees? Can a trademark be mortgaged? What might prevent this from happening effectively?

7. Short-form assignments . Intellectual property rights are often conveyed as part of a larger corporate merger or acquisition transaction. In order to avoid filing the entire transaction agreement with the Patent and Trademark Office for recording purposes, the parties often execute a short-form assignment document that pertains only to the assigned patents or trademarks. This short-form document is then recorded at the Patent and Trademark Office. A sample of such a short-form assignment follows.

Short-Form Trademark Assignment (for Filing with the US Patent and Trademark Office)

This assignment is made as of the ____ day of ______________ by ASSIGNOR INC., a _______ corporation having a principal place of business at ______________, hereinafter referred to as the ASSIGNOR, to ASSIGNEE CORP., a ___________ corporation, having a principal place of business at __________________, hereinafter referred to as ASSIGNEE.

WHEREAS, ASSIGNOR is the owner of the registered trademarks and trademark applications, hereinafter collectively referred to as the TRADEMARKS, identified on Schedules “A” and “B” attached hereto, together with the good will and all rights which may have accrued in connection therewith.

WHEREAS, ASSIGNEE is desirous of acquiring the entire right, title and interest of ASSIGNOR in and to said TRADEMARKS together with said rights and the good will of the business symbolized thereby.

NOW, THEREFORE, for good and valuable consideration paid by the ASSIGNEE, receipt of which is hereby acknowledged, ASSIGNOR does hereby sell, assign, transfer and set over to ASSIGNEE, its successors and assigns, ASSIGNOR’s entire right, title and interest in and to the TRADEMARKS, together with said good will of the business symbolized thereby, said TRADEMARKS to be held and enjoyed by the ASSIGNEE, its successors and assigns as fully and entirely as the same would have been held and enjoyed by the ASSIGNOR had this assignment not been made.

ASSIGNOR covenants and agrees to execute such further and confirmatory assignments in recordable form as the ASSIGNEE may reasonably require to vest record title of said respective registrations in ASSIGNEE.

IN WITNESS WHEREOF, ASSIGNOR has caused this Assignment to be executed by a duly authorized officer.

By: _____________________ Date: ____________________

2.5 Assignment of Trade Secrets

Like other IP rights, trade secrets may be assigned by their owners. As the leading treatise on trade secret law announces in the heading of one of its chapters, “Trade Secrets Are Assignable Property.” Footnote 18 Yet the assignment of trade secrets is perhaps the least developed and understood among IP types.

Part of the complexity arises from the fact that the term “trade secret” refers to two distinct concepts: A trade secret is, on one hand, a piece of information that derives value from being kept secret. Yet the term also refers to the set of enforceable legal rights that give the “owner” of that information legal redress for its improper acquisition or usage. In some ways, this dichotomy is similar to that seen with patents and copyrights. On one hand, there is an invention, and on the other hand, a patent right that gives its owner enforceable legal rights with respect to that invention. Likewise, a work of authorship and the copyright in that work of authorship. Unfortunately, trade secrecy law is hobbled by the existence of only a single term to describe both the res that is protected, and the legal mode of its protection.

It is for this reason that the few courts that have considered issues surrounding trade secret assignment have distinguished between “ownership” of a trade secret and its “possession.” In DTM Research, L.L.C. v. AT&T Corp ., 245 F.3d 327, 332 (4th Cir. 2001), the court held that “While the information forming the basis of a trade secret can be transferred, as with personal property, its continuing secrecy provides the value, and any general disclosure destroys the value. As a consequence, one ‘owns’ a trade secret when one knows of it, as long as it remains a secret.” Accordingly, the court held that a party possessing secret information is entitled to seek redress against another party that misappropriated it, even if the first party lacks “fee simple” title to that information (i.e., if the first party itself allegedly misappropriated the information from another).

Possession of a trade secret also figures prominently in cases that discuss the assignment of trade secrets. When the owner of a copyrighted work of art transfers the copyright to a buyer, the transferor loses its right to reproduce the work further. Likewise, when the owner of a trade secret transfers that secret to a buyer, the transferor loses its right to exploit that secret further. As the court explained in Memry Corp. v. Ky. Oil Tech., N.V ., 2006 U.S. Dist. LEXIS 94393 at *16 (N.D. Cal. 2006), “in giving up all rights to use of the secrets through assignment, the assignor is implicitly and legally bound to maintain the secrecy of the information contained in the trade secrets.”

2.6 Joint Ownership

Just like real and personal property, IP may be co-owned by multiple parties. But the laws regarding joint ownership of IP are different than those affecting real and personal property. To make matters worse, they also differ based on the kind of IP involved, and they vary from country to country. As a result, planning for joint ownership of IP can become fraught with risks and traps for the unwary. As one waggish practitioner has written, “‘Joint ownership of IP’ – no words strike more terror into the heart of an IP practitioner than the task of having to provide appropriate contractual provisions in such a situation.” Footnote 19

Joint ownership of IP rights impacts prosecution of patents and trademarks, exploitation of those rights, and licensing and enforcement of rights. These principles are discussed below in the context of patents, copyrights, trade secrets and trademarks under US law.

2.6.1 Patents

When more than one individual makes an inventive contribution to an invention, the resulting patent will be jointly owned. As explained by the Federal Circuit in Ethicon v. United States Surgical Corp. , 135 F.3d 1456, 1465 (Fed. Cir. 1998), “in the context of joint inventorship, each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions.”

The rights of joint owners of patents are described in 35 U.S. Code § 262:

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

Thus, each co-owner of a patent may independently exploit the patent without the consent of its co-owners. But unlike copyrights, joint owners of patents do not owe one another a duty of accounting or sharing of profits. Thus, the co-owner of a patented process that uses it to embark on a profitable new manufacturing venture has no obligation to share any of its earnings with the co-owners of the patent.

Any co-owner of a patent may also license it to others, again with no obligation to share royalties or other amounts received with its co-owners. Footnote 20 While a co-owner may grant an exclusive license to a third party, and that exclusivity may operate to prevent the granting co-owner from granting further licenses to others, it has no effect on the other co-owners of the patent, who may continue to exploit or grant other licenses under the patent.

Likewise, any co-owner of a patent may bring suit to enforce it against an infringer, but in order for the suit to proceed, it must join all other co-owners in the suit (see Section 11.1.5 ). Moreover, as illustrated in Ethicon , a retroactive license from any co-owner will serve to authorize the infringer’s conduct, thus defeating a suit brought by fewer than all co-owners .

2.6.2 Copyrights

There are some similarities between the treatment of joint owners under US copyright and patent law. Under US copyright law, each co-owner of a copyright may independently exploit the copyright without permission of the other co-owners. This exploitation includes performance, reproduction, creation of derivative works and all other exclusive rights afforded by the Copyright Act. However, unlike patents, a copyright co-owner who earns profits from the exploitation of a jointly owned work must render an accounting to his or her co-owners and share the profits with them on a pro rata basis. Thus, if three members of a band compose a song, and one of them quits to pursue a solo career, the soloist must account to the other two for any profits that he or she earns from performing the song (or a derivative of it) for the duration of the copyright.

Likewise, any co-owner of a copyright may license the copyright to others. As with patents, an exclusive license granted by a single co-owner will not be particularly valuable to the licensee, as the other co-owners are free to license the same rights to others. Such an exclusive license will thus be considered nonexclusive for purposes of standing to sue. Footnote 21 As with other exploitation, the copyright licensor must account to the other co-owners for any profits earned based on the license.

Finally, any co-owner of a copyright may sue to enforce the copyright against an infringer without the consent of the other co-owners. As with patents, a license from any co-owner will serve to authorize the infringer’s conduct. But unlike patent infringement litigation, notice to the co-owners of a copyright, and their joinder in an infringement suit, is not mandatory, but discretionary in the court (see 17 U.S.C. § 501(b), discussed in greater detail in Section 11.1.5 , Note 5).

2.6.3 Trade Secrets

There is scant case law, and little reliable commentary, discussing the rights and obligations of joint owners of trade secrets to one another. Yet from the authority that exists, it appears that joint owners of trade secrets, unlike joint owners of patents and copyrights, are not free to exploit jointly owned trade secrets without the consent of their co-owners.

Thus, in Morton v. Rank Am., Inc ., 812 F. Supp. 1062, 1074 (C.D. Cal. 1993), one co-owner of trade secrets relating to the operations of the Hard Rock Café chain sued another co-owner who used the information in violation of a noncompetition agreement. The court held that, under California law, being the co-owner of a trade secret does not necessarily insulate one from a claim of trade secret misappropriation. In Jardin v. DATAllegro, Inc ., 2011 U.S. Dist. LEXIS 84509 *15 (S.D. Cal. 2011), another California court, citing Morton , held that a joint owner of a trade secret could be liable for disclosing the trade secret in a patent application without the permission of his co-owner.

It also appears, in at least one case, that a co-owner of a trade secret may sue a third party for misappropriation of that trade secret without the consent of the other co-owner(s). In MGP Ingredients, Inc. v. Mars, Inc ., 465 F. Supp. 2d 1109 (D. Kan. 2006), MGPI and SNM jointly owned trade secrets relating to the formulation of the popular Greenies® dog chews. MGPI alleged that SNM impermissibly disclosed these trade secrets to Mars, Inc., which then began to manufacture its own dog chews using the secret formula. The court rejected Mars’ motion to dismiss MGPI’s suit for trade secret misappropriation against both SNM and Mars on the basis that SNM was a co-owner of the trade secrets .

2.6.4 Trademarks

Unlike patents, copyrights and trade secrets, the primary purpose of a trademark is to act as an indication of the source of goods or services. The ownership of a single mark by two or more entities contradicts this fundamental principle and is thus “disfavored” by the law. As the Sixth Circuit cautions in Yellowbook Inc. v. Brandeberry , 708 F.3d 837, 845 (6th Cir. 2013),

Joint ownership is disfavored in the trademark context. By their nature, trademarks derive their value from exclusively identifying a particular business. If customers are confused about which business the mark refers to, one of the users may unfairly benefit from the goodwill of the other, or the goodwill of the mark may be dissipated entirely. Beneficial joint ownership or licensing schemes may be devised, but courts are not well placed to fill in these details, and parties (and customers) are typically best served by exclusive ownership.

Nevertheless, the PTO permits joint ownership of registered marks. One scenario in which this is permitted is when the joint owners are related companies that exhibit a “unity of control” that eliminates consumer confusion because the joint owners are, for practical purposes, operating as a single unit. Footnote 22 In another scenario, two parties may be granted “concurrent” registrations for the same mark in connection with a similar product in different geographic markets. Footnote 23 In addition, the owner of a trademark registration may assign a partial interest in that registration to a third party, after which both parties will be co-owners of the registration. Footnote 24 This situation occurs, inter alia , as a result of the break-up of joint ventures and the inheritance of businesses by multiple heirs or testamentary beneficiaries. Footnote 25

When a jointly owned trademark serves as an indication of source, no individual co-owner has the right to exploit that mark separately from the collective use made by the joint owners. For example, the four original members of the musical group “The Commodores” held common law trademark rights in the group’s name. When Thomas McClary, one of the group’s members, left the group and began to perform under the names “The 2014 Commodores” and “The Commodores Featuring Thomas McClary” the other group members sued him for trademark infringement and a number of other causes. The Eleventh Circuit held in Commodores Entm’t Corp. v. McClary , 879 F.3d 1114 (11 th Cir. 2018) that “The rights to use the name ‘The Commodores’ remained with the group after McClary departed, and the corollary is also true: McClary did not retain rights to use the marks individually.”

1. Vive la difference ? Why is there such discord among four areas of US IP law regarding the rights of joint owners? Would there be value in harmonizing these different systems? How would you recommend that such harmonization be pursued?

2. Economic justifications . Judge Richard Posner offers a potential economic justification for the discrepancies in the treatment of jointly owned copyrights and patents.

In both domains, a joint owner is allowed to use or license the jointly owned work without the permission of the other owner or owners; this rule reduces transaction costs by eliminating bilateral monopoly. But the joint owner of a copyright who uses or licenses a copyright must account to the other owners for the profits of the use and share them with those others, while the joint owner of a patent need not. The latter rule provides greater encouragement to inventors to keep working to improve their inventions, consistent with the continuously improving quality of technology, but not of the arts. Footnote 26

What do you think of this explanation? Would requiring the co-owner of a patent to share its profits from the exploitation of the patent with its co-owners decrease innovation? Why doesn’t the accounting requirement similarly dampen creative activity?

Figure 2.6 Though he was an original member of the musical group The Commodores, Thomas McClary did not retain rights to utilize the group’s name after he left the band in 1984.

3. International inconsistency . Commentators have long observed that US law is out of step with the laws of many other countries in how it handles jointly owned IP. For example, in many countries in Europe and Asia, IP rights may not be exploited, licensed or asserted without the consent of all joint owners. Is this approach preferable? What does it mean for joint owners of IP?

In 1990, Professor Robert Merges and Lawrence Locke analyzed the laws of the United States and various other countries regarding their handling of joint patent owners. They concluded, among other things, that:

The American rule permitting co-owners to work their patent without compensating the other co-owners is preferable to the French rule requiring compensation … [T]he French rule can lead to a situation where both co-owners elect not to work the patent, in hopes of forcing the other co-owner to work it and split the profits. Since society has an obvious interest in seeing patented technology developed, the American rule is better.

The right of co-owners to license and assign their full interest, or any portion of it, should be restricted according to the rule in effect on the continent, in Great Britain and in Japan: consent of all co-owners should be required. This will prevent one co-owner from taking advantage of the others … Footnote 27

Do you concur with these recommendations? Why or why not? Should any of Merges and Locke’s recommendations be applied to forms of IP other than patents?

1 See Enovsys LLC v. Nextel Commc’ns Inc ., 614 F.3d 1333, 1342 (Fed. Cir. 2010).

2 See also Section 12.4 , Note 4, discussing these statutory provisions as mechanisms for terminating copyright licenses .

3 See Timothy K. Armstrong , Shrinking the Commons: Termination of Copyright Licenses and Transfers for the Benefit of the Public , 47 Harv. J. Legis . 359 , 405–09 ( 2010 ) (discussing implications for software) and Jorge L. Contreras & Andrew Hernacki , Copyright Termination and Technical Standards , 43 U. Baltimore L. Rev . 221 ( 2014 ) (discussing implications for technical standards) .

4 See Jonathan M. Barnett , Why Is Everyone Afraid of IP Licensing ? 30 Harv. J.L. & Tech. 123 , 126 ( 2017 ) .

5 See Standard Parts Co. v. Peck , 264 U.S. 52 (1924) (employee hired to invent a specific improvement owed a duty to assign patent rights to the employer even though the employment contract did not specifically mention patent rights).

6 See 8 Chisum on Patents § 22.03[2] (“The line between these ‘hired-to-invent’ and ‘general employment’ categories is a fine one, and it often must be drawn on the basis of sharply conflicting testimony … [ Standard Parts Co. v. Peck ] has served as a precedent for a multitude of decisions by lower federal courts, both finding (1) an employment to invent and (2) the absence of such employment.”)

7 As explained by Professor Chisum, “The classic ‘shop right’ doctrine provides that an employee who uses his employer’s resources to conceive an invention or to reduce it to practice must afford to his employer a nonexclusive, royalty-free, nontransferable license to make use of the invention, even though the employee subsequently obtains a patent thereon. The shop right is not an ownership interest in the patent. Rather it constitutes a defense to a charge of patent infringement by the employee or his/her assignee.” 8 Chisum on Patents § 22.03[3].

8 See, e.g., Jesse Dukeminier et al., Property 716 ( 8th ed., Wolters Kluwer Law & Business , 2014 ) .

9 For a discussion and lively critique of this doctrine, see Carol M. Rose , Crystals and Mud in Property Law , 40 Stan. L. Rev . 577 ( 1988 ) .

10 Professor Sean O’Connor analyzes the FilmTec rule and Justice Breyer’s critique in Sean O’Connor , The Aftermath of Stanford v. Roche: Which Law of Assignments Governs? , 24 Intell. Prop. J. 29 ( 2011 ) . Professor Dennis Crouch considers these issues in the context of patent prior art in Dennis Crouch , Not-Yet Filed Invention Rights, Patently-O, December 2, 2020, https://patentlyo.com/patent/2020/12/filed-invention-rights.html .

11 For a discussion of the substance of Justice Breyer’s dissent in Stanford v. Roche , see Section 2.3 , Note 3.

12 See Parker Tresemer , Best Practices for Drafting University Technology Assignment Agreements after FilmTec, Stanford v. Roche, and Patent Reform , 2012 U. Ill. J.L. Tech. & Pol’y 347 ( 2012 ) (offering concrete proposals for the improvement of university assignment documents), Sean M. O’Connor , The Real Issue Behind Stanford v. Roche: Faulty Conceptions of University Assignment Policies Stemming from the 1947 Biddle Report , 19 Mich. Telecomm. & Tech. L. Rev. 379 , 421 ( 2013 ) (noting that “it is not clear that universities will be able or willing to impose new present assignment agreements upon their faculty without some form of consideration or shared governance consultation”). Notwithstanding the notoriety of Stanford v. Roche , not all universities appear to have gotten the message. For example, in Omni Medsci, Inc. v. Apple Inc. , 7 F.4th 1148 (Fed. Cir. 2021), the Federal Circuit held that a University of Michigan bylaw providing that intellectual property in a faculty member’s inventions “shall be the property of the University” did not automatically assign the inventor’s rights in the invention to the university. It explains that “On its face, [the clause] does not unambiguously constitute either a present automatic assignment or a promise to assign in the future. It does not say, for example, that the inventor ‘will assign’ the patent rights—language that this court has previously held to constitute an agreement to assign rather than a present assignment. Nor does it say that the inventor ‘agrees to grant and does hereby grant’ title to the patent—language that this court has previously held to constitute a present automatic assignment of a future interest. We conclude that [the clause] is most naturally read as a statement of intended disposition and a promise of a potential future assignment, not as a present automatic transfer.”

13 Dennis Crouch, Overbroad Assignment Agreement: Invalid under California Law, Patently-O, November 19, 2020, https://patentlyo.com/patent/2020/11/overbroad-assignment-california.html .

14 See Dennis Crouch, Pre-Invention Innovations Not Captured by Employment Agreement Duty to Assign, Patently-O, April 29, 2021, https://patentlyo.com/patent/2021/04/invention-innovations-employment.html .

15 Barton Beebe, Trademark Law: An Open Source Casebook, version 4.0 at Part III, 127 (2017).

16 Irene Calboli , Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone , 57 Fla. L. Rev. 771 , 776 ( 2005 ) .

17 Note that the requirement that a trademark license be accompanied by a transfer of goodwill was rejected in Dawn Donut Co. v. Hart’s Food Stores, Inc ., 267 F.2d 358 (2d Cir. 1959), discussed in Section 13.1 .

18 Milgrim on Trade Secrets, § 2.02.

19 Neil Wilkof , Joint Ownership of a Trade Mark: The Tribulations of Termination , IPKat, November 26, 2010 , https://ipkitten.blogspot.com/2010/11/joint-ownership-of-trade-mark.html .

20 See Schering Corp. v. Roussel-UCLAF SA , 104 F.3d 341, 344 (Fed. Cir. 1997) (“Each co-owner’s ownership rights carry with them the right to license others, a right that also does not require the consent of any other co-owner”).

21 See Sybersound Records, Inc. v. UAV Corp. , 517 F.3d 1137 (9th Cir. 2008).

22 See Trademark Manual of Examining Procedure (TMEP), 1201.07(b)(ii).

23 15 U.S.C. § 1052(d) (“Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons”).

24 Trademark Manual of Examining Procedure (TMEP), 501.06.

25 See, e.g., Iskenderian v. Iskenderian , 144 Cal. App. 4th 1162 (Cal. App. 2006) (trademark in family restaurant was validly transferred by late parent to three children).

26 Richard A. Posner , Intellectual Property: The Law and Economics Approach , 19 J. Econ. Persp. 57 , 70 ( 2005 ).

27 Robert P. Merges & Lawrence A. Locke , Co-ownership of Patents: A Comparative and Economic View , 72 J. Pat. & Trademark Off. Soc’y 586 ( 1990 ).

Figure 2.2 The creators of the Superman character died in near poverty while the Man of Steel went on to form a multi-billion-dollar franchise. Sections 203 and 304 of the US Copyright Act were enacted to enable authors and their heirs to terminate any copyright assignment or license between 35 and 40 years after originally made in order to permit them to share in the value of their creations.

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• Ownership and Assignment of Intellectual Property
• Jorge L. Contreras , University of Utah
• Book: Intellectual Property Licensing and Transactions
• Online publication: 21 June 2022
• Chapter DOI: https://doi.org/10.1017/9781009049436.003

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Can you assign IP that doesn’t yet exist?

This year, we plan to introduce a few new sessions, and retire some others, as part of our continual improvement plan.

IP Draughts is currently working on a new session, titled “What does this IP drafting mean, and what is its legal effect?” In it he explores the differences in meaning and legal effect between:

• agreeing first ownership of future IP;
• agreeing to assign future IP to one of the parties; and
• assigning (now) future IP.

These issues might arise, for example, in the IP terms of a collaborative research agreement, or in an employment contract.

You might think this topic is rather theoretical, but the purpose of including it is to get the students to think carefully when engaged in the practical subject of drafting IP ownership provisions.

Declarations of ownership

Consider, for example, the following clause, taken from one of the standard, UK Lambert research agreements :

The Collaborator will own the Intellectual Property Rights in the Results, and may take such steps as it may decide from time to time, at its expense, to register and maintain any protection for the Intellectual Property Rights in the Results, including filing and prosecuting patent applications for any of the Results…

What is the legal effect of this clause? Will the (future) IPR automatically belong to the Collaborator without further formality or documentation?

In IP Draughts’ view, the answer to this question could be yes in the UK, but is likely to be no in the USA. Let us make the following factual assumptions:

• An employee of the other party to the contract, defined in the Lambert agreements as the Institution, makes an invention when doing work under the contract.
• A patent application is to be filed in respect of that invention.
• As between the employee and the Institution, the employer owns the invention and patent application under section 39 of the Patents Act 1977, as it was an invention made in the course of specially assigned duties of the employee.

Relying on declaration of ownership in UK

(1) Any person may make an application for a patent either alone or jointly with another. (2) A patent for an invention may be granted— (a) primarily to the inventor or joint inventors; (b) in preference to the foregoing, to any person or persons who, …by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it … (c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) …

Thus, someone other than the inventor can both apply for a UK patent and be “entitled to the whole of the property” in a UK patent and therefore be granted the patent as its first owner.

This entitlement could, in IP Draughts’ view, arise without the need for any separate, written assignment from the inventor or the Institution, and simply by virtue of the employment duties of the inventor, and the above clause in the research contract between the Institution and the Collaborator.

Need for assignment in the USA

A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.

This wording refers to “assigning” the invention, rather than use the UK concept of the grant of a patent to someone who is entitled to it by virtue of an agreement.

Assignment language for future inventions

In the UK, in IP Draughts’ view, there doesn’t need to be an assignment (a formal transfer of title to property) in order for this entitlement to arise. Nevertheless, a prudent Collaborator might well want to have some “belt and braces” wording in the contract such as an obligation on the Institution to execute further assignment documents and to cause its employee to do so, and/or include assignment language in the contract.

What language should you use in the contract to assign future IP? Should you say “hereby assigns”? Will the law recognise a present assignment of IP that doesn’t (yet) exist? If you say “agrees to assign”, does this imply that a further assignment needs to be executed once the IP comes into existence?

UK copyright law recognises the possibility of assigning future IP. Section 91 of the Copyright, Designs and Patents Act 1988 provides:

Where by an agreement made in relation to future copyright, and signed by or on behalf of the prospective owner of the copyright, the prospective owner purports to assign the future copyright (wholly or partially) to another person, then if, on the copyright coming into existence, the assignee or another person claiming under him would be entitled as against all other persons to require the copyright to be vested in him, the copyright shall vest in the assignee or his successor in title by virtue of this subsection.

UK patent law has no equivalent provision, but arguably section 7 of the Patents Act 1977, quoted above, achieves a similar result, at least when the parties are at the stage of obtaining a patent. At least this was the view of Arnold J in the case of KCI v Smith & Nephew [2010] EWHC 1487. In that case he was concerned with an employment contract that included the following language:

I hereby assign and agree to assign to the Company all right, title and interest in all confidential information, inventions and improvements conceived or developed by me…

Referring to section 7, Arnold J said (obiter): “In my view, this [section] must mean that it is possible to assign the legal title (and not just the beneficial interest) in an invention before it is made”.

In taking this approach, he draws some comfort from the US Supreme Court decision of Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems Inc , et al.  (number 09-1159) June 6, 2011. In that case, an inventor had signed two documents that dealt with the question of ownership of an invention, one with his employer Stanford University, and the other with a predecessor of Roche, Cetus Corporation. Even though the Cetus document was executed at a later date than the Stanford document, the Supreme Court held that the later document prevailed. As Breyer J (dissenting) put it:

In the earlier agreement—that between Dr. Holodniy and Stanford University—Dr. Holodniy said, “I agree to assign . . . to Stanford . . . that right, title and interest in and to . . . such inventions as required by Contracts and Grants.” In the later agreement—that between Dr. Holodniy and the private research firm Cetus—Dr. Holodniy said, “I will assign and do hereby assign to Cetus, my right, title, and interest in” here relevant “ideas” and “inventions.”

The Lambert agreement from which the above-quoted clause was taken (Lambert 5) also includes the following clause, which takes a more rigorous and lengthy approach to this issue:

To the extent that any Intellectual Property Rights in the Results are capable of prospective assignment, the Institution now assigns those Intellectual Property Rights to the Collaborator; and to the extent any Intellectual Property Rights in the Results cannot prospectively be assigned, the Institution will assign those Intellectual Property Rights to the Collaborator as and when they are created, at the request of the Collaborator.

Conclusions

Contracting parties find it natural to state who will own future IP. A prudent drafter will go on to provide for assignment of IP. There are some technical issues with assigning future IP, which the drafter may wish to address in a number of ways, including having a “further assurances” clause to require further documents to be executed where necessary under national IP laws.

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3 responses to “ Can you assign IP that doesn’t yet exist? ”

This was central to the Federal Circuit decision in Stanford Univ. v. Roche, https://ogc.stanford.edu/sites/default/files/08-1509.pdf

(The Supreme Court decision in Stanford v. Roche dealt with the Bayh-Dole Act, not with the assignment per se. The Federal Circuit decision dealt squarely with the assignment issue.)

Thanks, DC. The assignment wording is discussed in the dissenting judgment of Breyer J, but it is interesting to see the fuller discussion at Federal Circuit level. Also the point about registration within 3 months, which I was not aware of.

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Use Present Tense for Present Automatic Assignment of Patent Rights

Posted by Thomas P. Howard | Aug 05, 2021 | 0 Comments

by James Juo .

In Omni MedSci, Inc. v. Apple Inc. , Nos. 2020-1715, 2020-1716 (Fed. Cir. Aug. 2, 2021), the Federal Circuit held that the specific “shall be” language of an employment agreement did not effectuate a present automatic assignment of patent rights.

Dr. Mohammed Islam is a professor at the University of Michigan (UM), who took an unpaid leave-of-absence from UM in 2012, and filed multiple patent applications during his time on-leave. In 2013, Dr. Islam requested that UM confirm his ownership of the patents, but UM refused, asserting that it had made expenditures to support the cost of Dr. Islam's space and had provided “medical school faculty partners who have helped springboard ideas with him.” So, UM took the position that it was the owner of the patents. Dr. Islam did not formally appeal UM's decision, but also did not formally assign his patents to UM.

Dr. Islam did assign the patents to Omni in December 2013, and Omni sued Apple in 2018 for patent infringement in this lawsuit. But Apple argued that UM owned the patents, so Omni lacked standing to assert the patents against Apple.

The issue on appeal was whether Dr. Islam's employment agreement automatically transferred legal title in his invention to UM. There was no dispute between Apple and Omni that the inventions were not directly related to Dr. Islam's teaching duties, but rather grew out of his time on leave.

Below are relevant clauses from UM's bylaws (Dr. Islam's employment agreement included a provision agreeing to abide by UM's bylaws), with emphasis added:

1) Patents … acquired as a result of or in connection with administration, research, or other educational activities conducted by members of the University staff and supported directly or indirectly (e.g., through the use of University resources or facilities) by funds administered by the University regardless of the source of such funds, and all royalties or other revenues derived therefrom shall be the property of the University.

4) Patents, copyrights, and property rights in computer software resulting from activities which have received no support, direct or indirect, from the University shall be the property of the inventor, author, or creator thereof, free of any limitation which might otherwise arise by virtue of University employment.

5) In cases which involve both University-supported activity and independent activity by a University staff member, patents, copyrights, or other property right in resulting work products shall be owned as agreed upon in writing and in advance of an exploitation thereof by the affected staff member and the Vice-Provost for Research in consultation with the Committee on Patents and Copyrights and with the approval of the University's Office of the General Counsel. It is understood that such agreements shall continue to recognize the traditional faculty and staff prerogatives and property rights concerning intellectual work products.

The Federal Circuit, in an opinion written by Judge Linn and joined by Judge Chen, held that this language “is most naturally read as a statement of intended disposition and a promise of a potential future assignment, not as a present automatic transfer.”

First, paragraph 1 merely stipulates conditions governing assignment, rather than effectuating a present transfer of a present or future right.

Second, the “shall be” language in paragraph 1 should not be read as a present automatic assignment because the same language found in paragraphs 4 and 5 could not be so read.

Third, paragraph 1 does not use present tense words of execution. Notably, the provisions did not say that the inventor “agrees to grant and does hereby grant” title to the patent (for a present automatic assignment of a future interest) or that the inventor “will assign” the patent rights (for an agreement to assign).

Fourth, consistent with this interpretation, UM also uses an Invention Report that includes a declaration referencing bylaw 3.10, which states: “As required, I/we hereby assign our rights in this invention and all resulting patents … [to UM].” This separate form contains language of present assignment rather than of confirmation.

The Federal Circuit also noted the parties' past conduct was not particularly helpful in this instance and did not change the court's interpretation of the above language.

Judge Newman, however, dissented and argued that the words “shall be the property of the University” in paragraph 1 was an unambiguous statement of intended and agreed ownership, and supports no plain and ordinary meaning other than that UM is vested as owner when the property comes into being.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.

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Is it possible, in an agreement/assignment, to provide for an assignment of future IP rights? How are different IP rights treated when it comes to the assignment of future IP? What are the technical issues and the key points for practitioners to include in such an assignment?

It is possible to transfer ownership of future copyright works (ie works that have not yet been created). Section 91(1) of the Copyright Designs and Patents Act 1988 (CDPA 1988) provides that where an agreement is made in relation to future copyright, which is signed by the prospective owner, then ‘if, on the copyright coming into existence, the assignee or another person claiming under him would be entitled as against all other persons to require the copyright to be vested in him’, the copyright shall vest in the assignee or their successor in title. ‘Future copyright’ means copyright which will or may come into existence in respect of a future work or class of works or on the occurrence of a future event (CDPA 1988, s 91(2)).

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Related legal acts:

• Copyright, Designs and Patents Act 1988 (1988 c 48)
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Copyright definition, what does copyright mean.

Any property right over certain creative works, which grants exclusive right to the owner.

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Assignment is a legal term whereby an individual, the “assignor,” transfers rights, property, or other benefits to another known as the “ assignee .”   This concept is used in both contract and property law.  The term can refer to either the act of transfer or the rights /property/benefits being transferred.

Contract Law   

Under contract law, assignment of a contract is both: (1) an assignment of rights; and (2) a delegation of duties , in the absence of evidence otherwise.  For example, if A contracts with B to teach B guitar for $50, A can assign this contract to C.  That is, this assignment is both: (1) an assignment of A’s rights under the contract to the $50; and (2) a delegation of A’s duty to teach guitar to C.  In this example, A is both the “assignor” and the “delegee” who d elegates the duties to another (C), C is known as the “ obligor ” who must perform the obligations to the assignee , and B is the “ assignee ” who is owed duties and is liable to the “ obligor ”.

(1) Assignment of Rights/Duties Under Contract Law

There are a few notable rules regarding assignments under contract law.  First, if an individual has not yet secured the contract to perform duties to another, he/she cannot assign his/her future right to an assignee .  That is, if A has not yet contracted with B to teach B guitar, A cannot assign his/her rights to C.  Second, rights cannot be assigned when they materially change the obligor ’s duty and rights.  Third, the obligor can sue the assignee directly if the assignee does not pay him/her.  Following the previous example, this means that C ( obligor ) can sue B ( assignee ) if C teaches guitar to B, but B does not pay C $50 in return.

            (2) Delegation of Duties

If the promised performance requires a rare genius or skill, then the delegee cannot delegate it to the obligor.  It can only be delegated if the promised performance is more commonplace.  Further, an obligee can sue if the assignee does not perform.  However, the delegee is secondarily liable unless there has been an express release of the delegee.  That is, if B does want C to teach guitar but C refuses to, then B can sue C.  If C still refuses to perform, then B can compel A to fulfill the duties under secondary liability.

Lastly, a related concept is novation , which is when a new obligor substitutes and releases an old obligor.  If novation occurs, then the original obligor’s duties are wiped out. However, novation requires an original obligee’s consent .  

Under property law, assignment typically arises in landlord-tenant situations.  For example, A might be renting from landlord B but wants to another party (C) to take over the property.   In this scenario, A might be able to choose between assigning and subleasing the property to C.  If assigning , A would be giving C the entire balance of the term, with no reversion to anyone whereas if subleasing , A would be giving C for a limited period of the remaining term.  Significantly, under assignment C would have privity of estate with the landlord while under a sublease, C would not. 

[Last updated in May of 2020 by the Wex Definitions Team ]

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College sports, realignment and the origin of the grant of rights

• College football reporter.
• Joined ESPN in 2012.
• Graduate of the University of Delaware.

The most-discussed document in college sports is stored away in an office in Charlotte, North Carolina, far from the prying eyes of the public or, as it turns out, the school administrators who actually signed it.

The ACC's grant of rights, which is now under dispute in three different jurisdictions, is -- along with its companion agreement, the league's multimedia rights deal -- kept top secret. Or it was until Florida State filed a lawsuit hoping to escape from under the contract's weight.

A North Carolina judge likened the league's grant of rights and multimedia deal to Coke's secret formula -- everyone's heard of it, no one knows what's actually in it. And yet, the ACC is hardly alone in its covert handling of key documents.

The Big 12's grant of rights was reviewed by teams of high-priced lawyers as Texas and Oklahoma looked to depart for the SEC three years ago, and yet the document itself never saw the light of day publicly.

Why the big secret?

"That's a really good question," one ACC administrator said.

"I don't know that answer," an ACC athletic director said. "I guess because people are hopeful there's a way around it."

"Everybody knows it's out there," another official said before acknowledging the secretive nature of its specific language. "It's like smoke coming from the Vatican."

The inscrutability has given the document an almost mythical status, but in shrouding the grant of rights in mystery, it has become a sort of Rorschach test for fans and media hoping to predict the next round of realignment in college sports. Want your team to change conferences? A few bucks just needs to change hands and the grant of rights disappears. Want to maintain the status quo? The grant of rights is as inescapable as a life sentence at Alcatraz.

"People look at the ACC dispute and think, well, this is just a simple contract and the terms are unfair," said David McKenzie, an attorney in North Carolina who specializes in intellectual property and has followed the ACC lawsuits closely. "The problem is that overlooks what's at the center of the contract, which is essentially copyrights."

So what exactly is the grant of rights, and why are the current lawsuits in Florida, North Carolina and South Carolina so potentially impactful in college sports even beyond the ACC?

The seeds of the document were planted in 1984, with the Supreme Court's ruling in NCAA v. Board of Regents of the University of Oklahoma that each individual school had a right to negotiate its own multimedia rights rather than ceding them to the NCAA.

In the aftermath of that ruling, the rush to land profitable TV deals began, and that often meant neighboring schools fighting for the same space on a limited number of TV networks in a limited number of Saturday time slots. It also meant negotiating separate deals with different providers, occasionally dealing with fly-by-night broadcast entities that quickly went belly-up before paying what they owed, leaving schools to file lawsuits to recoup losses. In short, it was an every-school-for-itself system that didn't function efficiently.

That's when the Big Ten came up with a solution.

"Since media was aggregating, it made sense to aggregate our rights," said former Big Ten commissioner Jim Delany. "It was a business decision and a control decision. They thought we'd be better off with single point negotiations and split the revenue that came out of that."

The idea was simple: The schools sign their rights over to the conference in exchange for an agreed-upon percentage of league revenue. The conference then sells those rights to a TV network (or several networks). By leveraging each member's rights as a package, the league has far more power in negotiating a profitable deal that, at least in theory, would result in the sum value exceeding that of the individual parts.

The idea of bundling schools for the sake of TV negotiations wasn't exactly new, but what the Big Ten realized is that an official document that guaranteed those rights to the league provided security -- for the conference, the schools and, most importantly, the TV partners, who strongly valued a package deal that guaranteed a certain amount of games between designated schools.

In other words, the grant of rights is a promise, rather than an expectation, that the games being sold for broadcast will be played.

"If you're going to enter into long-term agreements that are complex," Delany said, "it makes sense that there's some understanding with respect to what's being sold."

This was 1988 -- a year before Delany took over as conference commissioner -- and, at the time, the Big Ten called its agreement an "assignment of rights." The contract, separate from its media rights agreement with its TV partner, tied schools' media rights to the league, which then bundled the rights to networks. The Big Ten's original assignment of rights was a roughly three-page document, according to Delany, that covered football and men's and women's basketball. It has typically been extended in 10-year increments, and while there was often significant discussion among university presidents and administrators over the details of the agreement, there was little conflict. Everyone was on board.

In the years that followed, and particularly after the Big Ten partnered with Fox to launch its own network in 2007, the agreement ballooned in size and scope, but the underlying premise has remained largely unchanged today.

For a while, the Big Ten was, at least as far as what has been publicly disclosed, the only league that codified its version of a grant of rights in a binding legal document separate from the league's bylaws. Others largely operated by rights granted in the league constitution or addendums thereof, which typically meant a school departing a league -- and paying the associated exit fee -- would regain its media rights upon departure.

That all worked out relatively well until the early 2000s, when a wave of realignment hit the Big East with teams fleeing for, ironically, the ACC. Then about a decade later, another massive shift in conference alignment took place, starting with rumors of Texas departing for the then-Pac-10 and ultimately seeing Rutgers, Maryland, Colorado, Nebraska, Texas A&M and Missouri all move.

The shake-ups left conferences concerned. The Big 12 acted first, authoring an official grant of rights that aimed to bind the league's members together for a specified term by assigning media rights to the conference for the duration of that term (which, typically, matched the league's current TV agreement). The Big 12's grant of rights was written, according to multiple sources, using federal copyright law as a template, and it was that agreement that, again according to multiple sources with intimate knowledge, the ACC used as its own template.

There was, until Florida State's lawsuit against the ACC was filed in December 2023, just one copy of the ACC's agreement available for viewing. To read the document and decipher the fine print, lawyers for ACC schools had to travel to the league's headquarters and work under constant supervision. They could take notes but not verbatim transcripts. A league administrator watched over anyone reviewing the document at all times, "like a proctored exam in college," according to one source with direct knowledge of the process. If the proctor needed a bathroom break, all activities grounded to a halt. If, upon review of the notes taken, a lawyer had follow-up questions, he or she would need to return back to the league's HQ to read the document again. Removing the grant of rights from its secret abode would result in a penalty from the league or, one imagines, a large boulder dropping from the ceiling like the opening scenes of "Raiders of the Lost Ark."

In reality, the document is far more mundane than the secrecy suggests.

The ACC's grant of rights, which became public as part of court filings in December 2023, is 3½ pages of sparse language outlining the reasons for its existence ("enhances the stability of conference membership," and "confirms the commitment by each member") and the rights conferred (multimedia, copyright). It runs through June 30, 2036, and requires any new members -- Stanford, Cal and SMU were added this summer -- to sign the same agreement.

While the grant of rights is inherently tied to the multimedia rights deal, they are separate documents, and changes to one does not necessarily impact the other.

"It serves all the constituents," said John Wildhack, a former executive at ESPN and now the athletic director at Syracuse. "It provides some certainty for the media company, certainty for the institutions and certainty for the conference."

That security is paramount because the final piece of the media food chain is the local cable companies, who pay affiliate fees to each network they carry based on a general understanding of the value of the product being aired. To assess that value, everyone involved needs assurances that the teams playing in a conference today will be the same ones playing throughout the life of the deal. Those assurances were even more critical as leagues and TV networks partnered on conference-specific networks, with ESPN and Fox absorbing significant upfront costs assuming they'd recoup that investment over a longer period from affiliate fees and advertising.

"It's the same thing [as the Big Ten had in the 1980s], but the stakes are higher because the economy is so much bigger," said Patrick Crakes, a media consultant and former executive at Fox Sports. "It gives the media companies a legal understanding that the games are going to be there."

But security was also at the forefront for the league's membership. During the realignment bubble in the early 2010s, the ACC risked losing teams beyond Maryland -- Florida State had flirted with the Big 12, for example -- and member schools wanted assurances that the league's future was safe. The league's initial grant of rights -- signed in 2013 -- provided that protection.

And until Florida State's lawsuit against the ACC, which asked a judge in Leon County, Florida, to allow the school to withdraw from the league without losing its media rights, the document functioned exactly as intended, even in times of great turbulence.

"So far, we've never had [a grant of rights] really get blown up," Crakes said. "What we've had is a predictable end of a grant of rights expiring and, of course, the TV deals are tied in with that."

Yes, there has been additional realignment, but it has always occurred within the framework of an expiring TV deal -- and, concurrently, the grant of rights.

Oregon, Washington and other Pac-12 schools were free to leave the conference at the end of the 2023-24 season because its deal had expired. Texas and Oklahoma just joined the SEC this summer -- two years after they agreed to join -- because both schools had to partially wait out the Big 12's grant of rights. (That agreement actually runs one more year, but the parties agreed to an early separation that costs Texas and Oklahoma a reported $50 million each.)

What's different in the ACC is that its grant of rights runs through summer 2036, putting teams eager to depart on a far different timeline than Texas or Oklahoma faced.

The reason for this is, essentially, the existence of the ACC Network. In 2016, all ACC members signed an addendum to the existing 2013 grant of rights, extending the agreement for 20 years at, according to Florida State's legal filing, the behest of ESPN, which needed a long-term agreement before investing in the launch of a new network in which it would serve as a 50-50 partner with the ACC.

"Because of the schools that have been added, we're going to get a significant [revenue increase] and we're going to start diligently working on an ACC network," former Florida State president Eric Barron said in 2013 after the signing of the initial grant of rights. "It was very clear ESPN wasn't interested in making either one of those investments, which are significant, if the conferences aren't stable."

As an administrator in another league put it: "The ACC sold its soul for a network."

In this case, that soul might be worth upward of $700 million per school, according to Florida State's lawyers, who've argued in court that figure could be the rough cost of paying an estimated $150 million exit fee and losing media rights through the 2035-36 season, a value FSU called "unconscionable."

On the other hand, the return on investment has been lucrative for the league. According to the ACC's most recent tax filing , the league has seen nearly a 50% increase in revenue since the launch of the network, including a nearly $200 million annual increase in television revenue.

The problem, of course, isn't the ACC's growth in absolute terms. Florida State and Clemson are eager for an exit strategy because other leagues -- the SEC and Big Ten, in particular -- have grown even faster thanks to new TV deals that dwarf what the ACC receives, and both will have a chance to negotiate yet another new TV deal before the ACC's grant of rights and TV contract expire.

Couple that with a likely new revenue-sharing model and uncapped scholarships that some schools have estimated could ultimately cost them $30 million or more per year, and FSU and Clemson see an existential crisis for their programs that simply didn't exist when the grant of rights was signed . Their concern essentially boils down to an admission that the old rationale for assigning rights to a conference -- that the sum exceeds the individual parts -- is no longer true in an era where Florida State and Clemson could, theoretically, command far more on the open market today than they will receive from the ACC over the next 12 years. (Though, it should be noted, neither school can negotiate with another conference until it informs the ACC of an intent to depart, and no league is likely to offer a serious financial return without knowing whether the schools actually own their media rights.)

In short, Clemson and FSU -- and any other school hoping to bolster its economic fortunes -- need a way out of the grant of rights before mapping out an alternative future, and that leads to a whole host of rhetorical gymnastics as each side debates the semantics of a few brief paragraphs.

Both the schools and the league argue the first article of the grant of rights explains their case: "Each of the member institutions hereby irrevocably and exclusively grants to the conference during the term ... all rights necessary for the conference to perform the contractual obligations of the conference expressly set forth in the ESPN agreement, regardless of whether such member institution remains a member of the conference during the entirety of the term."

The ACC suggests the language clearly binds Florida State and Clemson's media rights to the conference, regardless of whether it remains a member or not.

But Clemson, in its suit , counters that, should it depart the ACC, the league's contractual obligations to ESPN -- which, according to multiple sources, includes a minimum of 15 member schools -- would not be violated since the league would still exceed that limit, hence the ACC suffers no financial harm during the course of the agreement if the Tigers go elsewhere. Moreover, while the multimedia agreement is a separate document, Clemson contends its language does "not require the ACC to provide ESPN with the rights to games in which the home team is not a member of the ACC," so if the Tigers leave the conference, there's no violation of their contractual obligations, which in turn means the conference is still meeting its obligations to ESPN, thus still fulfilling the terms of the grant of rights.

What does a "game" mean? Do all "obligations" have to be explicit or is a school's membership implied? Does one legal document impact the other?

These are questions that loom large -- for Clemson, Florida State and around the sports media landscape.

Which side is right?

Prior to the board of trustees meeting that officially granted Florida State permission to file its lawsuit, athletic director Michael Alford posed a set of questions to board chair Peter Collins, according to documents obtained through a freedom of information request by ESPN. Among them was, perhaps, the most salient question looming over the entire process: "How confident should we be about this when there has been no known legal challenge to a grant of rights?"

Florida State and Clemson have determined they're confident enough -- or desperate enough -- to move forward. The ACC remains steadfastly confident that its grant of rights will stand up to judicial scrutiny. But no one really knows anything for certain until a judge issues a ruling. (And, even then, appeals will follow.)

But that doesn't mean the world isn't watching with bated breath. Members of the North Carolina board of trustees have voiced a desire for the Tar Heels to follow FSU and Clemson's lead, while others inside the administration have, according to multiple sources, urged patience because other schools have chosen to be the canaries in the coal mine. And if Florida State and Clemson prove victorious in court or the ACC caves to their demands, a new precedent will be set, and the ripple effects could be felt around the country as schools realize the document that had once bound them together isn't so unassailable after all.

It's a testament to just how chaotic the college sports world has become that a document signed with the sole purpose of providing security for the future could itself be but a speed bump on the road to whatever comes next.

An assignment of future rights is when a person transfers his/her contractual rights and obligations to someone else. This transfer completely confers all of the rights to receive benefits under the contract. However, if at the time of the assignment there is only a mere possibility or expectation that a future right will arise, the assignment ...

Assigning Future Rights. 25 October 2009 | Ken Adams. I find that the notion of categories of contract language (considered in detail in chapter 2 of MSCD) often provides a useful framework for analyzing substantive drafting issues. Take an issue I was asked about twice recently, once at the ACC annual meeting, once by one of my Penn Law students.

Future Rights. Another important aspect is future rights. The rule here is straightforward: you can't assign what you don't have. This means that a promise to assign rights you may acquire in the future is generally not enforceable at present. An effective assignment requires that the rights exist at the time of the assignment. Rare Skill ...

Ordinarily, the term assignment is limited to the transfer of rights that are intangible, like contractual rights and rights connected with property. Merchants Service Co. v. Small Claims Court, 35 Cal. 2d 109, 113-114 (Cal. 1950). An assignment will generally be permitted under the law unless there is an express prohibition against assignment ...

Contractual rights may be assigned to another party at any time unless: The contract prohibits the assignment of contractual rights. The assignment would fundamentally change certain duties or risks involved in the contract. The assignment has to do with future rights derived from a future, non-existent contract.

The assignment is against public policy or illegal. The contract contains a no-assignment clause. The assignment is for a future right that would only be attainable in a contract in the future. The contract hasn't been finalized or written yet. If you need help with an assignment of rights, you can post your job on UpCounsel's marketplace ...

An assignment of rights agreement refers to a situation in which one party, known as the assignor, shifts contract rights to another party. The party taking on the rights is known as the assignee. An Assignment of Rights Agreement. The following is an example of an assignment of rights agreement. Dave decides to buy a bicycle from John for $100 ...

Assignment of Future Rights. The French Intellectual Property Code states that the assignment of future rights is null and void. Some case law suggests it may be possible to draft workarounds to preserve the assignment of works not yet created. ... Intellectual property rights assignment agreements typically include a provision by which the ...

The assignment is over future rights associated with a future contract that does not currently exist; Delegation would increase the obligation of the obligee. For example, if a shoe manufacturer contracts to deliver soles to a store in the same town as the shoe factory, the other party cannot assign the delivery to a different store in another ...

Assignment. The transfer of a right from one party to another. For example, a party to a contract (the assignor) may, as a general rule and subject to the express terms of a contract, assign its rights under the contract to a third party (the assignee) without the consent of the party against whom those rights are held. Obligations cannot be ...

By contrast, passive verbs in indefinite or future tense are less likely to effectuate a present assignment. Indeed, agreements providing that an invention "shall be the property of … and all rights thereto will be assigned" to an employer have been held not to be an automatic assignment, but rather, an obligation to assign in the future.

As noted by the Federal Circuit in the decision below, Holodniy's initial agreement with Stanford constituted a mere promise to assign his future patent rights to Stanford, whereas his agreement with Cetus acted as a present assignment of his future patent rights to Cetus, thus giving the patent rights to Cetus (583 F.3d 832, 841-842 (2009)).

Future IP Assignment. The Founders acknowledge that they have or may have in the future the opportunity to develop, design, prepare or otherwise create, reproduce, modify, or improve the Intellectual Property and/or related know how for the benefit of the Company.The Company, shall own all intellectual property rights in and to all matter which is created by the Founders with respect to all ...

Related to Assignment of Future Rights. Assignment of Rights Borrower acknowledges and understands that Agent or Lender may, subject to Section 11.7, sell and assign all or part of its interest hereunder and under the Loan Documents to any Person or entity (an "Assignee"). After such assignment the term "Agent" or "Lender" as used in the Loan Documents shall mean and include such ...

Do you have a present assignment of future IP rights clause? Practical Law Resource ID a-123-9427 (Approx. 3 pages) Ask a question Practical Law may have moderated questions and answers before publication. No answer to a question is legal advice and no lawyer-client relationship is created between the person asking the question and the person ...

assigns" is viewed as a present assignment of all applicable future rights in an invention,4 and no further assignment is necessary to transfer ownership of the rights (although a confirming assignment document for a specific patent application later may be obtained so that it can be recorded with the U.S. Patent and Trademark Office).

a present assignment of existing property - rather than of future property, such as future rights to claim under an existing insurance policy or rights under a contract that has yet to be concluded; f. of legal rights, rather than of equitable interests (such as interests under a trust); and g. not conditional - including, because the

Assignment language for future inventions. In the UK, in IP Draughts' view, there doesn't need to be an assignment (a formal transfer of title to property) in order for this entitlement to arise. ... To the extent that any Intellectual Property Rights in the Results are capable of prospective assignment, the Institution now assigns those ...

by James Juo.. In Omni MedSci, Inc. v. Apple Inc., Nos. 2020-1715, 2020-1716 (Fed. Cir. Aug. 2, 2021), the Federal Circuit held that the specific "shall be" language of an employment agreement did not effectuate a present automatic assignment of patent rights.. Dr. Mohammed Islam is a professor at the University of Michigan (UM), who took an unpaid leave-of-absence from UM in 2012, and ...

Image rights—protection, exploitation and taxation. Image rights—protection, exploitation and taxationSTOP PRESS—Impact of the Retained EU Law (Revocation and Reform) Act 2023: This document contains references to retained EU law (REUL) and associated terms introduced by the European Union (Withdrawal) Act 2018 in connection with Brexit ...

Related to ASSIGNMENT: FUTURE RIGHTS. ASSIGNMENT AND TRANSFER SIGNATURE LINES FOR VALUE RECEIVED, the undersigned Holder hereby sell(s), assign(s) and transfer(s) unto _____ whose taxpayer identification number is _____ and whose address including postal zip code is _____, the within Receipt and all rights thereunder, hereby irrevocably constituting and appointing _____ attorney-in-fact to ...

A. First, it's important to understand the purpose of the assignment clause. "Assignment" occurs when a party transfers its rights and obligations under a contract to another party. Generally, unless the parties have agreed otherwise, each can assign its rights and obligations freely. Article 2 of the Uniform Commercial Code, a set of ...

Assignment is a legal term whereby an individual, the "assignor," transfers rights, property, or other benefits to another known as the " assignee .". This concept is used in both contract and property law. The term can refer to either the act of transfer or the rights /property/benefits being transferred.

The Big Ten's original assignment of rights was a roughly three-page document, according to Delany, that covered football and men's and women's basketball. It has typically been extended in 10-year increments, and while there was often significant discussion among university presidents and administrators over the details of the agreement, there ...

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Since its establishment in 2003, Motion Clinic has been exclusively dedicated to Follicular Unit Extraction (FUE) procedures. As one of the pioneers in the field, Motion Clinic was among the first licensed medical facilities to introduce and offer FUE procedure to the general public. Located in the heart of Gangnam, Seoul, they have successfully implanted over 25,000,000 hairs since 2003. Motion Clinic proudly holds official certification and licensing from the Korean Government, ensuring the highest level of medical services. This recognition allows international clients to benefit from their cutting-edge advancements and unwavering commitment to safety.

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This is the top hair transplant clinic in Seoul, without a doubt! The staff was incredibly warm and attentive, providing free lunches and hair washes. They even went above and beyond by adding 100 extra grafts during my procedure at no additional cost, just to ensure perfection. Mr. Kim, one of the consultants, was extremely helpful and responsive to all my inquiries, providing excellent support throughout the entire process and recovery period. If you’re considering a hair transplant, this clinic is the best option!

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The New Beginning of 2 Koreas! Come and Join the Most Promising Moment for Eternal Peace.

Korea is still a developing country with a history of 5,000 years. Understanding Korea's history and culture makes it easier to understand the Seoul of today. With our professionally trained guide, you will be guided into the history of Korea Our guide will be your storyteller of the day not only guiding you to the amazing sites around Korea, but providing the behind stories of historic & culture stories

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The Ultimate Guide to 19 Best Day Tours in Seoul for Every Kind of Traveler

I’ve lived in South Korea for over 3 years and I’m half-Korean I’ve been all over Korea and tested out some of the best tours in Seoul so you can figure out which is the best for you! Now, I don’t need to tell you that Seoul is a city that exudes energy, modernity, and centuries-old traditions, all wrapped in one. But what you might not know is how to see the city’s highlights in the most engaging way. So, grab a notepad (or just open your travel planning app), because I’ve got you covered!

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The Ultimate Guide to the Best Day Tours in Seoul for Every Kind of Traveler

Looking for the best way to maximize your time in Seoul ? The city offers a range of day tours designed to suit all kinds of interests. Nature lovers can find solace on trips like the Nami Island and Gangchon Rail Bike tour , which offers a unique blend of scenic beauty and physical activity. History enthusiasts will appreciate the Korean Folk Village and Everland Day Tour , combining a deep dive into Korean culture with modern-day thrills. There is so much to see in this beautiful country.

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Best Day Tours in Seoul

1. the traditional seoul: gyeongbokgung palace & bukchon hanok village.

Are you a history buff or just love dressing up? Then this day tour in Seoul is the dream! You get to visit the iconic Gyeongbokgung Palace – a UNESCO world heritage site, where you can rent a Hanbok —the traditional Korean outfit—and feel like a royal from the Joseon Dynasty. Don’t miss the Changing of the Guard ceremony; it’s like stepping into a time capsule! You’ll also get to experience Bukchon Hanok Village – one of Korean’s preserved traditional villages.

This is pretty much one of the most popular tours you can possibly grab. You can easily do this on your own as well, but it helps when you have a tour guide to give you some of the history of this palace and surrounding areas. 

2. Korean Culinary Experience: Street Food Tour

A visit to Seoul is incomplete without indulging in some lip-smacking Korean street food . This tour provides you with local guides and takes you through bustling markets like Myeongdong and Gwangjang , where you’ll get to try local cuisine classics like Tteokbokki, Hotteok, and Kimbap.

To be honest, this is one of my favorite day tours in Seoul. There aren’t a lot of food tours available in other parts of Korea, so this is a great stepping stone to knowing what foods to try and eat in South Korea. Korean food is more than just Korean BBQ! So go out there and try some of my favorite dishes that I grew up with. 

EMBARK ON A CAPTIVATING NORYANGJIN FISH MARKET TOUR | In Seoul, where you’ll witness a bustling hub of activity and immerse yourself in the vibrant seafood culture of Korea. Explore rows of stalls brimming with fresh seafood, observe the lively auctions, and indulge in delicious seafood delicacies straight from the market’s numerous restaurants. More details here.

3. Morning Hike to Bukhansan Mountain

If you’re anything like me and love to start your day with a burst of physical activity, then I suggest the Bukhansan Mountain morning hike. You’ll head to Bukhansan National Park and hike one of Korea’s most popular mountains. Get those boots on and enjoy the panoramic views of Seoul from the top. Just don’t forget your camera !

4. Uncover Hidden Gems: Gangnam Walking Tour

And finally, if you’re looking to explore the posh neighborhoods of Seoul, head over to Gangnam. Yes, as in ‘Gangnam Style’. It’s a shopper’s paradise and home to some of the best cafés and boutiques Seoul has to offer. Day tours in Seoul like this are perfect for people wanting to learn more about why Gangnam became so famous.

EXPERIENCE TRADITIONAL KOREAN CULTURE: RENT A HANBOK IN SEOUL | Immerse yourself in the rich cultural heritage of Korea by renting a hanbok , the traditional Korean attire, in Seoul. Read more details here .

5. Visit K-Drama Shooting Spots

Ready for the scoop? Seoul is not just a bustling metropolis; it’s also the backdrop for many of your beloved K-Dramas. Picture yourself at the Namsan Tower, where countless love confessions have been made. Or imagine strolling down the stylish streets of Garosu-gil. And let’s not forget the iconic Gyeongbokgung Palace, which has graced the screen in historical dramas. Whether you’re a hopeless romantic or a history geek, these K-Drama spots in Seoul add an extra layer of magic to your Korean adventure.

6. Seoul Night Tour

Experience the city that never sleeps! From the sparkling Han River to the bustling streets of Myeongdong, the Seoul Night Tour gives you a slice of Korean nightlife. It’s the city under the stars, and you won’t want to miss a moment. This tour is a great one to also experience delicious Korean street food as many Koreans love to stay out late with a good drink and good food. We have a tradition that when we drink, we also need to eat. 

7. Seoul Ghost Walking Tour

Ghosts in Seoul? You bet! On this eerie walking tour, you’ll hear legends and stories of Seoul’s haunted past. Wander through dark alleys and learn about the city’s mysteries, myths, and spirits that refuse to rest. This is a great way to get spooked especially during Halloween. 

8. Muslim Friendly Tour

Worried about finding Halal options while exploring day tours in Seoul? Worry no more! The Muslim Friendly Tour offers an itinerary that respects Islamic practices, including Halal dining options and prayer spaces. See the sights without the stress!

To be honest, trying to find food tours strictly for Muslims within Korea can be quite difficult, so to see this amazing guided tour being offered and available is amazing. I often get asked what are the options for Muslims in Korea and unfortunately, it’s quite difficult for me to navigate as someone who isn’t. So rely on the experts living in Seoul to provide that information and join this amazing Muslim Tour in Seoul! 

9. Cooking Experience + Mangwon Market Tour

This 5 star cooking experience is one that shouldn’t be missed! Unleash your inner chef in this interactive cooking experience! Learn how to make Korean dishes like Kimchi and Bibimbap under the guidance of local experts. It’s a deliciously fun way to immerse yourself in Korean culture. You’ll be able to experience a tour of Mangwon Market as well.

Korean food is no easy task, but this Korean cooking experience will help you learn how to make some of the best and easiest Korean dishes. You’ll be stuffed at the end of this experience and hopefully learn more about Korean food and culture. 

10. Seoul Biking Tour

Explore Seoul at your own pace with a biking tour that takes you along the Han River and through some of Seoul’s most scenic parks. You’ll cover more ground and see the city from a unique, up-close perspective. In this tour, you’ll be able to have lunch and experience Korean tea at a traditional tea house. You’ll get to experience iconic sights including Iwha Woman Street, Sinchon, Chungdong Church, Deoksu Palace, Gyeongbokgung Palace, and the famous Insadong markets. 

Best Day Tours from Seoul

These are some of the best day trips from Seoul that you can take. The best thing about traveling within Korea is that it’s quite easily accessible. 

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11. Nami Island, Petite France, Garden of the Morning Calm and Gangchon Rail Bike , Your Nature Escape from Seoul

This is one of the best Seoul day trips that offer you a breath of fresh air—literally! Imagine pedaling down old train tracks with the wind in your hair at Gangchon, surrounded by lush landscapes that look like they’re straight out of a painting. It’s probably one of the most booked tours you can get because of all the popular destinations. The garden of Morning Calm is a beautiful garden, especially during Christmas in Korea . Nami Island is an island where you can literally see all 4 seasons change. One of my favorite things to do in Korea is ride the Gangon Rail Bike, it’s a unique experience that you should try at least once. 

And let’s not forget the fairy-tale charm of Nami Island, with its towering tree lanes, romantic walkways, and even ostriches prancing around. It’s as if Mother Nature herself decided to bless this tiny island. Whether you’re traveling with family, your special someone, or just your adventurous self, this combo is a serene yet exciting way to experience the Korean countryside. Nami island is where many K-Drama movies were filmed and is a popular tourist location, especially during autumn in Korea . This should be added to your Seoul itinerary . 

12. Get Your Adrenaline Pumping: DMZ Tours

One of the most recommended tours on GetYourGuide is the DMZ (Korean Demilitarized Zone) tour. It’s an eye-opener that offers a glimpse into the tension between North and South Korea. The DMZ tour includes stops at the 3rd Tunnel, the Freedom Bridge, and the Dora Observatory. A must for anyone interested in geopolitics or history!

This is one of the best things to do in Paju as it has a lot of history. The DMZ has a lot of interesting information and can provide you with some insight into exactly what has happened. Due to the war, many Koreans had escaped from North Korea and a lot of family members in Korea still have family in North Korea that they haven’t been able to see for decades. You can choose between a full day tour or half-day tour. Some tours include the JSA (joint security area) while others do not – this is one thing to consider as it’s definitely an area that shouldn’t be missed. 

Suggested DMZ Tours

• JSA DMZ Tour
• Half Day DMZ Tour

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13. Pocheon Art Valley and Herb Island

Boulders and blooms, anyone? The Pocheon Art Valley and Herb Island tour is a feast for the eyes and soul. First, you’ll explore the stunning landscapes of Pocheon Art Valley—an abandoned quarry-turned art space. Then, bask in the aromatic bliss of Herb Island, filled with themed gardens and magical evening lights. Nature and art have never blended so beautifully.

Pocheon Art Valley is a beautiful place to check out and you can easily take the tram up to the location and see these beautiful rocky features. Herb Island not too far from Pocheon Art Valley is a great place to see some lights and take photos. Many K-Dramas were filmed here because of the beautifully designed backdrops. During summer, it’s a great place to see the lavender. 

14. Korean Folk Village and Everland Day Tour

From the past to the present, experience the full spectrum of Korean culture. Begin your day at the Korean Folk Village, where you can immerse yourself in the traditions and crafts of yesteryears. Then hop over to Everland, Korea’s largest theme park, for some high-adrenaline fun. 

Everland is great for older kids as there aren’t as many rides available for younger children, however, there are still a few available and an amazing zoo exclosure to see the different exotic animals. You can get some delicious Korean park food, ride some large wooden rollercoasters, drink beer, and take many photos as well. 

15. Suwon Hwaseong Folk Village Tour

Unlock the secrets of the Joseon Dynasty with a visit to Suwon Hwaseong Folk Village. As you walk along the well-preserved Suwon Hwaseong fortress walls, you’ll find artisans demonstrating traditional Korean crafts. It’s history brought to life, making you feel like you’ve traveled back in time. You’ll also get to experience Gwangmyong cave as well as a rail bike ride.

16. Incheon Day Tour

Now, don’t get me wrong, I love Seoul – I lived in Seoul for a year, but Incheon is where my heart and home is. I lived in Incheon for 2 years and it’s where most of my family are located and I just find it to be one of my favorite places to be. 

Incheon is more than just Incheon airport , there are a lot of things to do in Incheon despite what a lot of people say. You can discover the historical Chinatown, visit the fairytale-like Songwol-dong Fairy Tale Village , and don’t miss out on the breathtaking views at Wolmido Island. There are a lot of areas to shop and see in Songdo as well. 

17. Legoland Korea Resort

Block off a day, adventurers, because Legoland Korea Resort is a colorful paradise and amusement park where every brick tells a story! Perfect for families, kids-at-heart, or anyone who ever dreamt of stepping into a life-sized Lego world. Located in Chuncheon City in Gangwon-do, a convenient distance from Seoul, this wonderland offers roller coasters, water attractions, and hands-on Lego building experiences. Dive into themed zones like Ninjago World and the magical Lego Castle. It’s more than just a theme park; it’s a creative playground that brings your favorite Lego sets to life.

You’ll want to select the Roundtrip Shuttle Bus option and departure times starts between 8-8:30 from either Hongik University Station or Myeongdong Station. 

18. Vivaldi Park SnowyLand

If you are traveling during Winter in Korea , you’ll definitely want to see the snow and visit this beautiful winter wonderland during this time of year. Grab your mittens and your sense of wonder, because Vivaldi Park SnowyLand and ski resort is a winter wonderland you won’t want to miss! Located just a snowball’s throw away from Seoul, this magical resort transforms into a snowy paradise during the winter months. 

Whether you’re a pro on the slopes or just there for the snow angels, there’s something for everyone. Think of sledding hills, snow tunnels, and even an ice climbing wall. Plus, the atmosphere is as warm as hot cocoa with bonfires and evening light shows. So if you’re yearning for that perfect blend of exhilaration and coziness, look no further. Get ready to make your winter fantasies a frosty reality!

19. Jeonju Hanok Village, Jangtaesan & Daedunsan Tour from Seoul

If you are traveling during autumn or winter, this is a great Seoul day tour to take especially for nature lovers. It’s also amazing to take outside of those time frames as well, but you’ll really get to see the beauty of Korea during those times of the year. 

Your journey starts with Jeonju Hanok Village – one of the best places to visit in Korea, where traditional Korean houses, known as Hanok, line the streets like a scene from a historical drama. But keep those cameras ready, because next up is Jangtaesan—home to luscious forests and eco-friendly attractions. And for the grand finale? Daedunsan, where suspension bridges and cable cars await, offers sweeping views of the mountainous landscape. From history to heights, this tour has it all. You’re not just sightseeing; you’re soul-searching in the heart of Korea.

Thoughts on Best Day Tours in Seoul

And there you have it, my adventure-seeking pals! From historical haunts to culinary quests, from natural wonders to the magic of television brought to life, the best day tours in Seoul offer a tapestry of experiences that are as diverse as they are thrilling. Whether you’ve got a single day or a whole week to explore, these tours are your passport to a deeper understanding of this vibrant city.

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Hey, I'm NieNie, also known as Stephanie – a California native of hapa heritage (an American with a mix of Korean and German) with an enduring love for travel. Transitioning from my expat life in South Korea to embracing the experience of living in Germany, while also frequenting visits to my family in the Philippines, I'm documenting my adventure as a plus-size woman immersing herself in diverse cultures. Join me on Adventures with NieNie for travel tips, cultural insights, and inspiring stories from South Korea, the Philippines, and Germany. Let's embark on this adventure together!

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Best of South Korea - 10 days

• Partially Guided

Places You’ll See

• Ride the cable car to N Tower's summit
• Try on a Hanbok in Bukchon Hanok Village
• Explore the DMZ and meet a North Korean defector
• Cycle around Gyeongju's ancient sites
• Join a meditation session at Golgulsa Temple
• Introduction
• Day 1 Welcome to Seoul!
• Day 2 Exploring Seoul
• Day 3 The DMZ
• Day 4 Gyeongju Hanok
• Day 5 Golgulsa Temple Stay
• Day 6 Explore Busan
• Day 7 Cooking Class
• Day 8 Fly to Jeju
• Day 9 Hiking Jeju
• Day 10 Return to Seoul

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On The Go Tours

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5 to 99 years old

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On The Go offer tours to a variety of destinations worldwide, while specialising in travel for those who are wanting to have fun, yet still have a cultural experience. The experienced team at On The Go provide carefully planned tours, as well as personalised tailor-made holidays! For those...

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Customer Reviews

• Tour Operator On The Go Tours 4.6
• Marc · 20th October 2022 Great way to see and experience South Korea for the first time. Our group of 4 were all very pleased with the level... Show more
• Clelie · 21st July 2024 It was a great tour, we saw so many things we wouldn't have seen if we had been traveling by ourselves! The days were... Show more
• Dana · 28th June 2024 Tour with On The Go with guide Hung - was exceptional! Just don’t let the company pressure you into pre~booking any... Show more

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• Upcoming departures
• September 2024
• October 2024
• November 2024
• August 2025
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• November 2025
• Sunday 22 Sep, 2024 Tuesday 1 Oct, 2024 English Sold Out €3,264 See Similar Tours For These Dates

Space on this tour is not guaranteed. Book this tour to request your place and the operator will confirm availability.

• Sunday 27 Oct, 2024 Tuesday 5 Nov, 2024 English Sold Out €3,264 See Similar Tours For These Dates

Good to Know

• Currency ₩ Won South Korea

As a traveller from USA, Canada, England, Australia, New Zealand, South Africa you will need an adaptor for types C, E, F.

• These are only indications, so please visit your doctor before you travel to be 100% sure.
• Typhoid - Recommended for South Korea. Ideally 2 weeks before travel.
• Hepatitis A - Recommended for South Korea. Ideally 2 weeks before travel.
• Tuberculosis - Recommended for South Korea. Ideally 3 months before travel.
• Hepatitis B - Recommended for South Korea. Ideally 2 months before travel.
• Japanese B encephalitis - Recommended for South Korea. Ideally 1 month before travel.
• Unfortunately we cannot offer you a visa application service. Whether you need a visa or not depends on your nationality and where you wish to travel. Assuming your home country does not have a visa agreement with the country you're planning to visit, you will need to apply for a visa in advance of your scheduled departure.
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ENHYPEN announce 2024 to 2025 ‘Walk The Line’ world tour

Currently featuring shows in South Korea and Japan

K-pop boyband ENHYPEN have announced their upcoming 2024 to 2025 ‘Walk The Line’ world tour, currently featuring concerts in South Korea and Japan.

• READ MORE: ENHYPEN – ‘Romance: Untold’ review: funky, sultry and incredibly addictive

Today (September 2), ENHYPEN and their label Belift Lab announced the first batch of concerts for their upcoming 2024 to 2025 world tour, titled ‘Walk The Line’. The world tour will mark the third in the band’s career, with the previously, the 2023 to 2024 ‘Fate’ tour, having only concluded last month.

The seven-piece will kick off their 2024 to 2025 ‘Walk The Line’ world tour with two shows in October at the Goyang Sports Complex Main Stadium in South Korea. Thereafter, they will head to the Japanese cities of Saitama, Fukuoka and Osaka in November, December and January respectively for what the company has touted as their “biggest dome tour to date”.

Ticketing information for ENHYPEN’s upcoming world tour have yet to be announced. More dates are expected to be announced for the 2024 to 2025 ‘Walk The Line’ world tour soon. Keep tabs on this page for the latest updates.

The dates for ENHYPEN’s 2024 to 2025 ‘Walk The Line’ world tour are:

OCTOBER 2024 05: Goyang Sports Complex Main Stadium, Goyang, South Korea 06: Goyang Sports Complex Main Stadium, Goyang, South Korea

NOVEMBER 2024 09: Belluna Dome, Saitama, Japan 10: Belluna Dome, Saitama, Japan

DECEMBER 2024 28: Mizuho PayPay Dome, Fukuoka, Japan 29: Mizuho PayPay Dome, Fukuoka, Japan

Recommended

JANUARY 2025 25: Kyocera Dome, Osaka, Japan 26: Kyocera Dome, Osaka, Japan

[공지] ENHYPEN WORLD TOUR ‘WALK THE LINE’ IN GOYANG 개최 안내 (+ENG/JPN/CHN) ( https://t.co/lJNhzaThet ) #엔하이픈 #ENHYPEN #EN_WORLDTOUR_WALKTHELINE #EN_WALKTHELINE pic.twitter.com/HKG4Sm9goW — BELIFT LAB (@BELIFTLAB) September 2, 2024

『ENHYPEN WORLD TOUR ‘WALK THE LINE’ IN JAPAN』開催決定！ ENHYPEN、自身最大規模のドームツアーにぜひご期待ください！ 詳しくはこちら→ https://t.co/hYjlatymJF #ENHYPEN #EN_WORLDTOUR_WALKTHELINE #EN_WALKTHELINE pic.twitter.com/wgFpY4jkgI — ENHYPEN Official Japan (@ENHYPEN_JP) September 2, 2024

In July 2024, ENHYPEN released their second studio album, ‘Romance: Untold’ . In a glowing four-star review ,  NME ‘s Tanu I. Raj called the record “funky, sultry and incredibly addictive”.

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South Korea Tours & Holidays

South Korea has emerged from history as a dynamic destination full of spirit and surprises.

Enchanting travellers with temples full of mystique, markets brimming with divine handicrafts and some of the most beloved cuisine in the world - isn't it about time you surrendered to South Korea's charms?

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The little things: The Good Times guide to banchan 

Creative Cities: Jeonju 

Dive into tradition with South Korea’s fearless haenyeo community

Should you travel solely based on food experiences?

6 ways you can go beyond Asia’s hotspots in 2023 

A local explains why South Korean food is the best in the world

Japan or South Korea? How to choose your next holiday destination

Want to visit Lonely Planet’s 2018 Best in Travel spots? Here’s how.

South Korea at a glance

Capital city.

Seoul (9.9 million)

51.385 million

(GMT+09:00) Seoul

CALLING CODE

Electricity.

Type C (European 2-pin) Type E (French 2-pin, female earth) Type F (German 2-pin, side clip earth)

Learn more about South Korea

Geograhy and environment.

South Korea is located at the south end of the Korean Peninsula, between the Sea of Japan and the Yellow Sea. Separated from   Japan   by the Korean Strait and demarcated from the state of North Korea by Korean Demilitarized Zone (DMZ), South Korea's terrain is a mix of flat lowlands and forested mountains. The coasts of South Korea are rocky and jagged, with thousands of islands (mostly inhabitable) scattered off the coastline.

Culture and customs

South Korea draws some traditions and customs from other neighbouring countries in Asia with a culture that stems from Confucianism. This system of philosophical and ethical teachings was introduced to South Korea in the 4 th century through Chinese scholars and was quickly embraced by the wider population until it officially became the state ideology in the early 1900s.

Confucianism emphasises respect for aging, elders and ancestors, an intrinsic hierarchy that runs through work and social life, and upholds traditional family roles so you’ll often see families living together in one house.

During your travels around South Korea, you’ll also see plenty of traditions such as the act of bowing when greeting people, women wearing traditional dress (hanbok) and the practice of taekwondo (Korean martial arts). As well as ancient beliefs, new generations of South Koreans are embracing a modernised culture, one full of K-pop, Korean cosmetics and popular foods like kimchi and tteokbokki.

History and government

South Korea’s had an often turbulent history dating back to around 8000 BC when it was known as just Korea, but the country’s most impactful conflict began in the 1500s with the attempted Japanese invasion. Korea went on to become a Japanese colony in 1910 following its annexation of the Korean Empire, which ended in 1945 at the conclusion of World War II.

The country was then divided into two parts, the northern part which was protected by the Soviet Union and the southern part which was protected largely by the United States. Both the northern and southern parts of Korea officially became North and South Korea in 1948 when the two regions failed to agree on forming one, united government.

In 1950, North Korea set in motion the Korean War which was intended to unify the two countries under communism. But after much destruction to infrastructure and loss of human life, a cease-fire was called in 1953 with both countries signing the 1953 Korean Armistice Agreement. The two countries have since agreed to work towards a final settlement (The Peace Treaty on the Korean Peninsula) to formally and officially end the Korean War.

South Korea now enjoys a fully prosperous economy with a similar capital economic standing to countries such as the United States, Japan and various countries in Western Europe.

You can’t go to South Korea for shopping and not stop in Seoul – the country’s premier destination for all things fashion, electronics, street food and skincare. In this shopper’s paradise of a city, you’ll find traditional Korean items perfect for souvenirs to tech gadgets not yet available on Australia’s shores.

Some notable districts/destinations where you can shop ‘til you drop include:

• Myeongdong (shopping district)
• Dongdaemun Market (shopping centre)
• Cheongdam-dong (luxury boutique area)
• Pyeonghwa (wholesale market)

Top 5 culinary delicacies of South Korea

1. bibimbap.

As one of Korea's standout dishes, bibimbap is a tasty concoction of meat, vegetables, egg and rice. Soy sauce, chilli paste, garlic and sesame oil all add flavour to this amazingly colourful dish found everywhere in Korea.

Kimchi is hailed as a nutritional powerhouse - packing a healthy punch of nutrients, vitamins and beneficial bacteria that makes it one of the world's healthiest superfoods. But most people don't eat these fermented vegetables for health reasons - it's the uniquely, tasty flavour and versatility that makes kimchi so popular in Korean cooking.

These delicious, savoury pancakes are a standard of Korean cuisine. With hundreds of different varieties, jeon can be served with red meat, chicken, seafood, vegetables, tofu and even edible flowers.

Similar to sushi, these highly popular rice-based morsels feature fish, beef or crab, wrapped in seaweed with pickled or fresh vegetables. Available all over Korea, they are the perfect snack on the run or quick, cheap lunch to enjoy between sightseeing.

Arriving in Korea by the way of Mongolia, mandu are essentially boiled, steamed or pan-fried dumplings. A cheap, street food favourite, mandu can be filled with everything from pheasant to tofu, cucumber, beef and beyond.

Top places to visit in South Korea

Whether you want to take a street food tour of the renowned Gwangjang markets, go shopping among the vibrant streets and check out some high-tech gadgetry or admire this city's soaring skyscrapers from Naksan at nighttime, Seoul can't be missed.

Explore the bustling city of Seoul on our 8 day South Korea Family Holiday.

Visit the fascinating Haedong Temple, explore the colourful Gamcheong Culture Village and take in the all 'round beauty of the second largest city in South Korea.

Travel to Busan on our 9 day South Korea Highlights tour.

Experience Jeonju like a local as you wander the Hanok Heritage Village in search of souvenirs, tasty treats, traditional houses and craft shops.

Admire the culture (and food) in Jeonju on our 9 day Essential South Korea tour.

4. Jeju Island

Wander South Korea's first ever UNESCO World Heritage listed site, Jeju Seongsan Sunrise Mountain/Castle, on the beautiul Jeju Island. And with volcanic landscapes and coastal rock formations, this laidback slice of heaven is well worth a visit.

Marvel at the beauty on Jeju Island on our 9 day Premium South Korea tour.

Festivals and events

Public holidays that may impact travel include:.

• New Year's Day
• Movement / Independence Movement Day
• Buddha's Birthday
• Children's Day 
• Memorial Day
• Liberation Day
• Chuseok / Korean Thanksgiving
• National Foundation Day (Gaecheonjeol)
• Hangeul Day

*Please note dates of  South Korean public holidays may vary.

Further reading

Similar destinations.

Thinking about a trip to South Korea but still browsing other destinations? Check out tours to neighbouring locations:

South Korea travel FAQs

When is the best time to visit south korea.

Autumn and spring are considered the optimal times to holiday in South Korea, as the extreme temperatures that are present during summer and winter can make travel uncomfortable at times. During autumn and spring expect moderate temperatures, a mild climate and less rain and humidity than at other times.

Do I need a visa to travel to South Korea?

SOUTH KOREA Australia: No - not required Belgium: No - not required Canada: No - not required Germany: No - not required Ireland: No - not required Netherlands: No - not required New Zealand: No - not required South Africa: No - not required Switzerland: No - not required United Kingdom: No - not required USA: No - not required

Your passport should be valid for a minimum period of 6 months from the date of entry into South Korea. . Most travellers do not need visas for Korea for stays of up to 30 days. You must also have an onward or return ticket.

If you are a male of Korean origin whose name appears on the Korean family register, you may be liable for military service even if you are travelling on your foreign passport.

The page is for general information only and may be subject to change. It is your responsibility to obtain relevant visa and travel information required for entry, departure and travel to each country or region you visit on your trip. You should confirm these with the relevant embassies and/or consulates. 

Last updated: 20/11/2023

Is tipping customary in South Korea?

Tipping in some establishments (particularly more traditional ones) is considered impolite, and is sometimes indicated with a 'no tipping' sign! Western-style, tourist-orientated places, however, usually welcome and receive tips. Use your discretion.

What is the internet access like in South Korea?

With one of the most developed internet infrastructures in the world, accessing the internet is easy in South Korea. Wi-Fi hot spots and cyber cafes are easily found in the cities, although when travelling in remote areas please be aware that internet access may be harder to find.

Can I use my mobile phone while in South Korea?

Travellers should be able to use their mobile phones in South Korea's cities and urban areas, as coverage is good. As in other countries, rural and mountainous areas may have less mobile phone receptivity. Ensure global roaming is activated with your service provider before leaving home.

What are the toilets like in South Korea?

South Korea has a combination of squat toilets and western-style flushable toilets. It's a good idea to carry your own toilet paper and hand sanitiser or soap while on holiday, as these are rarely provided in public toilets.

Can I drink the water in South Korea?

Tap water is considered safe to drink in many parts of South Korea unless otherwise marked. Ask your leader for guidance if you are unsure whether to drink tap water in the area you are travelling in.

Are credit cards accepted widely in South Korea?

Credit cards are usually accepted by hotels and large retailers. Smaller shops and restaurants may not accept credit cards, so always carry enough money to cover purchases, as paying with a credit card may not always be an option in South Korea.

What is ATM access like in South Korea?

ATMs are plentiful in large cities and urban centres, although not all ATMs accept foreign cards. Look for Global or Citibank ATMs, which usually accept cards from other countries.

Do I need to purchase travel insurance before travelling?

Absolutely. All passengers travelling with Intrepid are required to purchase travel insurance before the start of their trip. Your travel insurance details will be recorded by your leader on the first day of the trip. Due to the varying nature, availability and cost of health care around the world, travel insurance is very much an essential and necessary part of every journey.

For more information on insurance, please go to: Travel Insurance

How do I stay safe and healthy while travelling?

Intrepid takes the health and safety of its travellers seriously and takes every measure to ensure that trips are safe, fun and enjoyable for everyone. We recommend that all travellers check with their government or national travel advisory organisation for the latest information before departure:

From Australia?

Go to: Smart Traveller

From Canada?

Go to:  Canada Travel Information

From the UK?

Go to:  UK Foreign Travel Advice

From New Zealand?

Go to:  Safe Travel

From the US?

Go to:  US Department of State

The World Health Organisation also provides useful health information.

Does my trip support The Intrepid Foundation?

Yes, all Intrepid trips support the Intrepid Foundation. Trips to this country directly support our global Intrepid Foundation partners Eden Reforestation Projects and World Bicycle Relief. Intrepid will double the impact by dollar-matching all post-trip donations made to The Intrepid Foundation.

Eden Reforestation Projects

Eden Reforestation Projects are helping to mitigate climate change by restoring forests worldwide; they also hire locally and create job opportunities within vulnerable communities. Donations from our trips support restoration across planting sites in 10 countries around the globe. Find out more or make a donation World Bicycle Relief

World Bicycle Relief provides people in low-income communities with bicycles to mobilise school kids, health workers, and farmers in far-out areas – giving them access to vital education, healthcare, and income. Donations help provide Buffalo Bicycles – specifically designed to withstand the rugged terrain and harsh environment of rural regions – to those who need them most. Find out more or make a donation

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Jury trial date in multimillion-dollar lawsuit against PGA Tour golfer Tony Finau will be moved from October to 2025

One of the investors in PGA Tour golfer Tony Finau’s career when the Utah-born sports icon was a teenager will have to wait at least four more months, perhaps longer, to get his day in court after he filed a lawsuit in 2020 seeking more than $16 million in what he says are unpaid expenses, loans and percentages of winnings.

Last January, Judge James Brady of Utah’s 4th Judicial District Court scheduled an eight-day jury trial to begin on Oct. 2, 2024, in Provo to hear Salt Lake City businessman Molonai Hola’s case against Finau, 34, who was born and raised in Salt Lake City, but resided in the Utah County town of Lehi at the time of the original lawsuit filing in September 2020.

However, an email from Brady’s office informed attorneys representing the plaintiff, Hola, and the defendant, Finau, that “the court has received word recently that this case will need to be rescheduled due to unavoidable circumstances.”

One of Brady’s law clerks declined to give a more specific reason for the delay when contacted by the Deseret News on Friday, saying that once the new trial date is set, the reason will be listed on the courts calendar.

Hola’s Salt Lake City-based attorney, Joshua S. Ostler, said counsel on both sides know the reason “and understand it,” but are not at liberty to discuss it.

Judge Brady has announced he is retiring at the end of this calendar year after serving on the Fourth District Court bench since May 2010 when he was appointed by then Gov. Gary Herbert.

The judicial case manager informed both parties that the next available date for an eight-day jury trial at Provo District Court is May 28 to June 6, 2025. So the case will presumably have to be heard by a different judge.

Finau’s attorney, Stewart Peay, informed the court that he has a trial set in Idaho from May 27-30, 2025, so those dates will not work for him.

“It seems like that is not going to work for all the parties, or attorneys,” Ostler said. “We have been in contact with the clerk a little bit and they might work to see if we can get on some kind of expedited schedule. … There is a possibility we can get on the calendar the first thing next year, but I am not sure yet.”

A January trial could cause Finau to miss a PGA Tour event or two in Hawaii or California, but it comes before pro golf’s major tournaments begin in April with the Masters in Augusta, Georgia.

The trial’s continuance from next month to 2025 means that Finau will now be available to play in the PGA Tour’s new Black Desert Championship in St. George from Oct. 10-13, 2024.

Ostler said although the continuance puts Hola’s camp “in a little bit of limbo right now,” it is not necessarily a setback for the plaintiff.

“We want to get to trial. We want Mr. Hola to have his day in court, and have his claims heard. That is still going to happen. We were looking forward to the October trial. But if it has to be rescheduled, it has to be rescheduled,” Ostler said. “We will still be able to make our same case. I wouldn’t characterize it as a blow to our case or our side or anything like that.”

Here’s why plaintiff wants trial moved out of Utah County

After receiving notice of the continuance on Wednesday, and realizing that the continuance would likely require a new judge in the case, Hola’s counsel on Thursday filed a motion to change the venue from Provo to Salt Lake City, where the lawsuit was originally filed before Finau’s attorneys got it moved to Provo in January 2021.

Hola’s attorneys argue that the case should have remained in Salt Lake County because attorneys on both sides are in the state’s most populated county, as are most of the witnesses. Other participants will fly into Salt Lake City for the trial, they said in the motion, and will be inconvenienced if they have to make the longer drive to Provo.

Why does Tony Finau’s faith matter in this case?

Also, the plaintiffs argued in their motion that “a fair and impartial determination is more likely in Salt Lake County” due to Utah County having a higher concentration of members of The Church of Jesus Christ of Latter-day Saints than Salt Lake County.

“Tony Finau’s celebrity is well known throughout Utah, but especially in Utah County, where’s he’s resided for the past 15 years and where he resided when he first became famous,” the motion states.

“Also, it is well known that Tony Finau is a devout member of The Church of Jesus Christ of Latter-day Saints,” it continues.

Hola’s attorneys cited a 2021 Deseret News article stating that a survey showed 72% of Utah County residents identify as Latter-day Saints, compared to below 50% in Salt Lake County.

“Plaintiff acknowledges that the jury pool will consist of Tony Finau’s fans and admirers regardless of where the trial is held, but the impact on fairness and impartiality is undoubtedly smaller in Salt Lake County,” the motion states.

Finau’s attorneys have two weeks from last Thursday to respond to the change of venue motion. Ostler declined to elaborate on the prospects of getting the case moved back to Salt Lake County, or if the religion arguments are valid.

“I think the motion speaks for itself,” he said. “We’ve always maintained that the best place to have this trial is here in Salt Lake City.”

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MLB's travel plans for '24: Seoul, Mexico City, London, D.R.

David Adler

The MLB World Tour is coming to four international destinations in 2024: London, Mexico City, Seoul and Santo Domingo. 

The Seoul Series will be the opener of the 2024 MLB regular season -- and will mark the first MLB regular-season games ever played in Korea. 

Major League Baseball and the MLB Players Association announced the full plans for the four series on Wednesday.

• Seoul Series: Dodgers vs. Padres, March 20-21 (MLB season opener) • Mexico City Series: Astros vs. Rockies, April 27-28 • London Series: Mets vs. Phillies, June 8-9 • Dominican Republic Series: Red Sox vs. Rays, March 9-10 (Spring Training)

• MLB international

"Major League Baseball is incredibly excited for this extensive slate of international games in 2024," Commissioner Rob Manfred said. "Our recent efforts have produced strong enthusiasm around the globe, and we look forward to building on that foundation with returns to Mexico City and London, while also opening the season in Korea for the first time. In addition, we can’t wait to celebrate the tradition of the sport in the Dominican Republic with our visit to Santo Domingo next March. We are thrilled that our fans across four different countries outside the United States and Canada will have the opportunity to see the game’s stars."

The MLB World Tour schedule for next year includes the return of games to the United Kingdom and Mexico for a second consecutive season, after the 2023 London Series between the Cubs and Cardinals and Mexico City Series between the Giants and Padres, in addition to new stops in Korea and the Dominican Republic.

“Players have a deep interest in growing baseball around the world. No matter where they come from, players are linked by a passion for our game that transcends different languages, cultures, and nationalities,” said Tony Clark, the executive director of the MLB Players Association. “The series announced today will allow fans around the globe to gain a first-hand appreciation for the unmatched skill and infectious enthusiasm players display every time they go to work. We are excited to expand our international presence in new communities and celebrate the game we all love.”

Here's a look at each of the four international series in 2024.

Seoul Series

The Dodgers and Padres will open up the 2024 season with two games in Korea from March 20-21.  

The Seoul Series will mark the ninth time that the MLB season has opened outside the 50 U.S. states and Canada, and the first time in five years. Previous international openers include:

• 1999 -- Monterrey, Mexico (Rockies vs. Padres) • 2000 -- Tokyo, Japan (Mets vs. Cubs) • 2001 -- San Juan, Puerto Rico (Rangers vs. Blue Jays) • 2004 -- Tokyo, Japan (Rays vs. Yankees) • 2008 -- Tokyo, Japan (Red Sox vs. A's) • 2012 -- Tokyo, Japan (A's vs. Mariners) • 2014 -- Sydney, Australia (Dodgers vs. D-backs) • 2019 -- Tokyo, Japan (A's vs. Mariners)

It will be the Dodgers' first international games since they played the Padres in Mexico in 2018, and their second Opening Day abroad after the 2014 season opener in Australia.

"The Dodgers have a long and proud history of helping to grow the game abroad, highlighted by our trips to Mexico, China and Australia. It's very exciting to add Korea to the list," Dodgers president Stan Kasten said. "I know our players are thrilled to put their talents on display in a country so rich with baseball tradition and talent, including former Dodgers Chan Ho Park, Hee-Seop Choi and Hyun Jin Ryu."

The Padres will be playing internationally for a second straight season, but in a new country, going from the 2023 Mexico City Series to the 2024 Seoul Series. Like the Dodgers, they've also played abroad on Opening Day before, in the inaugural international season opener back in 1999. 

"Korea is a great baseball country with a rich tradition, passionate fans, and talented players, including current Padre and San Diego fan favorite Ha-Seong Kim," Padres CEO Erik Greupner said. "The Padres are proud to serve alongside the Dodgers as global ambassadors for the game of baseball with our historic 2024 Korea Series."

Mexico City Series

The second Mexico City Series will feature the Astros and Rockies for a pair of games on April 27 and 28, almost exactly a year after this season's inaugural Mexico City Series.

Both Houston and Colorado last played internationally in Mexico, but in Monterrey, not Mexico City. The Astros played two regular-season games against the Angels there in 2019, and the Rockies played an exhibition series against the D-backs that same year.  

The Astros have played exhibition games in Mexico City before, in 2016 against the Padres and 2004 against the Marlins.

• 2023 Mexico City Series

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London Series

The London Series returns for its third edition overall, with the Mets and Phillies facing off at London Stadium on June 8 and 9.

The Mets will be playing abroad for the first time since 2010, when they faced the Marlins in Puerto Rico. But they're no stranger to international games, having participated in both MLB's first-ever international regular season games in 1996 in Mexico and MLB's first-ever regular-season games in Japan in 2000.

• 2024 London Series will feature NL East rivalry in Mets-Phils

"Interest in baseball is growing all over the world, and to bring the Mets' 'never-say-die' attitude to sports fans in London is a tremendous honor," Mets owner Steve Cohen said. "Our Queens family is ready to show London a great time with exciting baseball and amazing experiences that create new fans and build the Mets community throughout the United Kingdom." 

The Phillies have never played regular-season games internationally, and have left the U.S. and Canada only once, over 50 years ago, for a pair of exhibition games against the Pirates in San Juan in 1977.

"Major League Baseball has done an excellent job of expanding its footprint internationally, and we are honored to play a role in that effort as part of the 2024 London Series," Phillies managing partner John Middleton said. "This will be a wonderful opportunity to showcase our players' talents and highlight the excitement that comes with a Phillies-Mets matchup for our fans in the UK and for those who have never attended a baseball game."

Dominican Republic Series

In addition to the three international regular-season series planned for in 2024, the Red Sox and Rays will play a Spring Training series in Santo Domingo at Estadio Quisqueya from March 9-10.

"This unique opportunity builds on our long-standing connection to the Dominican Republic and allows us to celebrate the remarkable talents and rich cultural heritage of a country whose passion for the game has distinctly shaped our organization," Red Sox president Sam Kennedy said. "From the players who have passed through our Dominican Republic Academy to those who have helped us win championships, we have been fortunate to witness the profound impact of Dominican players within our game, and we are thrilled to be able to bring Red Sox baseball to such a vibrant baseball community next year."

Exhibition games are also a key part of the MLB World Tour, which includes up to 16 exhibition games being played internationally between 2023 and ‘26, as well as up to 24 regular-season games spanning Asia, Europe and Latin America.