Intellectual Property Law Editing and Proofreading Services

Sixty-one words, three verbs, and one comma in the wrong place. That is a grant clause we were sent last year, and the question the parties eventually argued about was whether the licensee could translate the work. Nobody had thought about translation when the agreement was drafted. The clause listed several things the licensee could do and then trailed off into a phrase about related purposes, and two readers of ordinary competence came to opposite conclusions about what it covered. No fact was in dispute. The sentence was.

License agreements and assignments account for most of the intellectual property work that reaches us. Development, commissioning, and contributor agreements come with them, along with settlement and coexistence agreements, and the schedules that list what is actually being transferred. Confidentiality agreements, employee invention and IP assignment provisions, technology transfer and research collaboration documents, and the policies universities and companies write to govern all of it arrive in the same files.

Copyright law puts unusual weight on the document itself, and it does so in the statute. Under 17 U.S.C. 204(a), a transfer of copyright ownership "other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent."¹ The writing is not evidence of the transfer. It is a condition of it. That makes clarity in a grant clause a different kind of problem from clarity elsewhere, because an ambiguity is not merely inconvenient to a later reader, it is an ambiguity in the only instrument that made the transfer effective.

The rights being granted are enumerated, which gives an editor something firm to check against. Section 106 sets out the exclusive rights of a copyright owner as a closed list: reproduction, preparation of derivative works, distribution of copies, public performance, public display, and, for sound recordings, public performance by digital audio transmission.² A grant clause either maps onto that list or it does not. A clause permitting a licensee to "use, publish and distribute" the work names one of the six exactly, names a second in a word the statute does not use, and is silent about derivative works, which is where translation lives. Whether the parties intended to include the right to prepare derivative works is a question for them and for their lawyers. Whether the clause as drafted says so is a question about the sentence, and it can be answered by reading the sentence against the list.

Work made for hire is the other place where the drafting is load-bearing. The definition in section 101 covers work by an employee within the scope of employment, and separately covers work "specially ordered or commissioned" only where it falls into one of nine listed categories and where "the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire."³ Expressly, in a written instrument, signed by them. Agreements routinely recite that a commissioned work is a work made for hire without the recital appearing in a signed instrument, or describe the work in terms that do not match any of the nine categories, or say work for hire in the operative clause and assignment in the recitals as if the two were synonyms. They are not synonyms, and a document that uses them interchangeably has two different theories of who owns the work sitting in the same agreement.

Trade secret provisions have a similar shape. The Defend Trade Secrets Act definition requires that "the owner thereof has taken reasonable measures to keep such information secret", and that the information "derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means" by others who could profit from it.⁴ Reasonable measures is a factual question about conduct, not about wording, and nothing an editor does can supply it. What the wording can do is stop working against it. A confidentiality clause that defines Confidential Information so broadly that it covers everything the parties ever exchange, including material the agreement elsewhere describes as public, is a clause that describes no measures at all. Marking obligations tell the same story: an agreement that requires disclosures to be marked confidential and then, three pages later, provides that all disclosures are confidential whether marked or not, has not decided which regime it is operating.

Defined terms are where most of the damage happens in practice, because they are edited in isolation. An agreement defines the Work, the Materials, and the Deliverables, and after two rounds of negotiation the grant clause conveys rights in the Work while the schedule lists Deliverables and the warranty section speaks about the Materials. Each term was correct when it was written. Nobody read the document straight through afterwards. Checking it is mechanical and unglamorous: every defined term against its definition and against every use, every schedule reference against the schedule that now exists, and every cross-reference against the clause numbering as it stands after renumbering.

We do not decide any of the underlying questions. What rights should be granted, whether a term is commercially acceptable, whether a work qualifies as made for hire, whether confidentiality measures are adequate, and whether a clause is enforceable are matters for the parties and their counsel, and they reach us settled. We do not add rights to a grant, remove them, or resolve an ambiguity by choosing the reading we think was intended. Where a clause can be read two ways, both readings are set out and returned as a query, and the drafter decides which one the agreement is supposed to say.

Everything sent to us is treated as confidential, including unexecuted drafts, term sheets, and schedules identifying unpublished or unreleased work.