CAL IP ASSIGNMENT CLAUSES IN EMPLOYEE AND INDEPENDENT CONTRACTOR AGREEMENTS
INSTRUCTIONS AND DISCLAIMERS
The purpose of these samples is to empower producers of intellectual property (IP) to keep their IP out of unethical supply chains and to support ethical and sustainable commercial use of their IP. This information is for general purposes and does not constitute legal advice, nor does this website create or imply an attorney-client relationship between you and CAL.
The CAL IP Assignment Clauses are designed to be powerful, broad, and open-ended—you can condition assignment of your IP on the company’s use of the IP on any issues that are important to you. The clause is more than just an unenforceable promise. CAL IP Assignment Clauses are a built-in enforcement mechanism because company will have a contractual obligation to ensure that the IP you create is not used to commit human rights abuses. By using CAL IP Assignment Clauses you can empower victims of human rights abuses by providing a remedy as a third party beneficiary of your contract and give them standing and jurisdiction to sue in U.S. court based on the breach of your contract. You can also use CAL IP Assignment Clauses to improve supply chains. The clauses can create a contract obligation for companies to monitor and remedy abuses in their network of suppliers, manufacturers, producers, transporters, distributors, and retailers of the product.
The samples below show language new hires or workers could suggest adding to their new or existing employment contracts to prohibit use of their IP in ways that: (1) violate labor and employment and environmental laws or corporate social responsibility codes; (2) contribute to the unethical detention of immigrants, promote war or government domestic surveillance; or (3) violate your moral or ethical values on specific issues of your choice. If you are a current employee or independent contractor, you could suggest adding this type of paragraph to your existing IP assignment clause to protect future inventions.
If you are a new employee or independent contractor, you could propose to add a similar paragraph to the IP assignment clause your company proposes during your initial contract negotiations. Although existing employees can’t change rights they have already assigned away, it may be possible for existing employees to renegotiate the terms of their current employment contract to apply to future inventions. The bracketed [ALL CAPS]textis where you reference the section and paragraph number of your current or existing IP assignment clause. For the “Choose Your Own Adventure” sample, you insert your own issue that you are passionate about in the bracketed text. The samples below are designed for employment contracts but can be tweaked to apply to independent contractor agreements. Some terms and definitions may need to be tailored to the specific language and definitions in your existing or employer-proposed assignment clauses for consistency.
We recognize that sometimes it may feel like your employer or hiring company has much more bargaining power than you or that negotiating employment contracts and agreements can feel awkward or uncomfortable. Nevertheless, many companies are more flexible, open to new ideas, and sensitive to the concerns of their workers than you might expect. You never really know unless you are open with them about your concerns. Below are some talking points you can emphasize in your negotiations. The CAL Assignment Clauses:
· Show the company understands and is serious about protecting universal standards of human rights and environmental protections.
· Motivate employees and encouraging company loyalty by aligning with the goals, priorities, and values of workers.
· Increase awareness of human rights issues within the company’s own supply chains.
· Avoid situations of employee protest, resignation, and bad press.
The law concerning IP assignment to employers and hiring companies varies state-by-state and is different for employees and independent contractors. Enlisting the help of an experienced attorney can also help to ensure that CAL IP Assignment Clauses and their terms and definitions are consistent with the other parts of your contract and will be enforceable in your state. While CAL cannot draft custom contracts, we are eager to learn how individuals around the world will use this idea to advocate for human rights and the environment in their own contracts. Let us know how you used these samples, issues you encountered, and how you resolved those issues.
SAMPLE CAL IP ASSIGNMENT CLAUSES
1. WORKERS’ RIGHTS AND ENVIRONMENTAL PROTECTION
Notwithstanding the rights and obligations conferred upon Employee and Company by Section [SECTION #], Paragraph [PARAGRAPH #](“Assignment of Employee Inventions”) of this Agreement, Employee’s assignment or transfer to Employer, by virtue of agreement or by law, of any rights, title, interest, license, or waiver of moral rights, in and to any Inventions, that Employee may solely or jointly author, discover, develop, conceive, or reduce to practice within the scope of and during the period of Employee’s employment with Company (“Employee Inventions”) is expressly conditioned on utilization of Employee Inventions in compliance with the Company’s existing labor, employment, and environmental code(s) or local labor, employment, and environmental laws, whichever standard is higher. If Company, its subsidiaries, affiliates, contractors, or suppliers should, at any time, engage in any conduct that violates any applicable labor, employment, or environmental laws, or fail to uphold the Company’s own corporate-social responsibility commitments with respect to any supply chain utilizing Employee Inventions, Employee, andany individual who is injured or suffers damages, including but not limited to workers, laborers, landowners, property owners, those residing in geographical proximity to supply chain activities, survivors of those killed including but not limited to widows, widowers, children, and community members, due to the violation of applicable labor, employment, or environmental laws or failure to uphold the Company’s own corporate-social responsibility commitments(“Third Party Beneficiary”), will each have an independent right to seek injunctive relief or specific performance, in addition to any other remedy at law or equity to which Employee, and any Third Party Beneficiary, may be entitled.
2. IMMIGRANT DETENTION, WAR, AND DOMESTIC SPYING
Notwithstanding the rights and obligations conferred upon Employee and Company by Section [SECTION #], Paragraph [PARAGRAPH #](“Assignment of Employee Inventions”) of this Agreement, Employee’s assignment or transfer to Employer, by virtue of agreement or by law, of any rights, title, interest, license, or waiver of moral rights, in and to any Inventions that Employee may solely or jointly author, discover, develop, conceive, or reduce to practice within the scope of and during the period of Employee’s employment with Company (“Employee Inventions”) is expressly conditioned on Employer’s agreement that utilization of Employee Inventions may not be used in conjunction with contracts with U.S. Immigration and Customs Enforcement, the U.S. Department of Defense (or future government agency responsible for the detention of immigrants or conducting military activity or domestic surveillance programs). If Company, its subsidiaries, affiliates, contractors, or suppliers should, use Employee Inventions in conjunction with the U.S. Immigration and Customs Enforcement, the U.S. Department of Defense (or future government agency responsible for the detention of immigrants or conducting military activity or domestic surveillance programs), Employee, and any individual who is injured or suffers damages (“Third Party Beneficiary”), will have an independent right to seek injunctive relief or specific performance, in addition to any other remedy at law or equity to which Employee, or any Third Party Beneficiary, may be entitled.
3. CHOOSE YOUR OWN ADVENTURE.
Notwithstanding the rights and obligations conferred upon Employee and Company by Section [SECTION #], Paragraph [PARAGRAPH #](“Assignment of Employee Inventions”) of this Agreement, Employee’s assignment or transfer to Employer, by virtue of agreement or by law, of any rights, title, interest, license, or waiver of moral rights, in and to any Inventions that Employee may solely or jointly author, discover, develop, conceive, or reduce to practice within the scope of and during the period of Employee’s employment with Company (“Employee Inventions”) is expressly conditioned on Employer’s agreement that utilization of Employee Inventions may not be used in conjunction with [INSERT LIMITATION HERE]. If Company, its subsidiaries, affiliates, contractors, or suppliers should use Employee Inventions in conjunction with [REPEAT LIMITATION HERE], Employee, and any individual who is injured or suffers damages (“Third Party Beneficiary”), will have an independent right to seek injunctive relief or specific performance, in addition to any other remedy at law or equity to which Employee, or any Third Party Beneficiary, may be entitled.