When drawing up contractual relations for the performance of work, it is necessary to remember that the authors create the works, which means the legal relationship between the customer and the contractor between whom the author’s order agreement is concluded

It should be remembered that the author of any work has three categories of rights:

  • personal non-property (the right to be called the author, the right to inviolability and publication of the work).
  • exclusive property (the right to use the work for commercial purposes).
  • other rights, such as the right to access and follow.

Author's order agreement

In accordance with Article 1296, the exclusive right to any work created under an agreement between the performer and the customer belongs to the customer, unless otherwise provided by the agreement (that is, the exclusive rights may remain with the performer). According to Article 1288 of the Civil Code of the Russian Federation, “An author’s order agreement may provide for the alienation to the customer of the exclusive right to a work that should be created by the author, or for granting the customer the right to use this work within the limits established by the agreement.” (Clause 2 of Article 1288 of the Civil Code)

A copyright contract is concluded with an individual or a group of individuals to create, through his creative work, an object of copyright - works of science and art, computer programs, photographs, databases, etc. (Article 1256 of the Civil Code of the Russian Federation). And customers can also be individuals or legal entities, as well as states and municipalities.

The contract must necessarily provide for all the requirements for the form of submission of the work, genre, deadlines for performance and the scope of the rights transferred. That is, under an author's order agreement, the author undertakes, at the order of the customer, to create a work of science, literature or art on a tangible medium or in another form and to specify in detail the conditions for the alienation of the exclusive right to the work to the customer (complete alienation of the exclusive right to the work or the right to use the work within the limits established by the agreement, provided for in Articles 1286 and 1287 of the Civil Code of the Russian Federation).

If the exclusive right to a work in accordance with paragraph 1 of Art. 1296 belongs to the customer, the performer can use the work in his own interests under the terms of a royalty-free simple (non-exclusive) license during the entire period of validity of the exclusive right, unless otherwise provided by the contract. And vice versa, if, in accordance with the contract, the exclusive right to the work belongs to the performer, the customer has the right to use such work for the purposes for which the corresponding contract was concluded on the terms of a royalty-free simple (non-exclusive) license during the entire period of validity of the exclusive right, unless otherwise provided by the contract.

It should be remembered that the author's order agreement is urgent, otherwise it is not considered concluded. However, in some cases it is possible to provide the author with a grace period for creating a work, the duration of which may be one-fourth of the period established for the execution of the contract (clause 2 of Article 1289 of the Civil Code of the Russian Federation) or more.

An important point is the official registration of the fact of transfer of the work, otherwise all rights continue to belong to its creator, and the author can legally prohibit the customer from using the work, transfer it to a competitor, send claims for copyright infringement and demand compensation. That is, the fact that you bought the work will not mean anything if there is no documentary evidence with clearly stated conditions.

Thus, when concluding an author’s order agreement, it is important to indicate specific requirements - partial (indicate all conditions, terms and territory of use of the object) or the full scope of rights transferred to the customer, the date and place of conclusion of the agreement, information about the parties and their payment details, describe in detail the subject of the transaction, the amount of remuneration and the procedure for its transfer. After completing the order, a transfer and acceptance certificate is signed, which records the fact of transfer of rights and receipt of remuneration by the author. 

Intellectual property rights in a contract

Alienation agreement involves the complete transfer of exclusive rights to the work to the acquirer, including the right to transfer it to third parties. However, when creating an object of intellectual property (IP) under a work contract, such alienation does not occur. Article 1297, which deals with works created during the performance of work under a contract, states that the exclusive right to works created during the performance of a work contract or a contract for the performance of any scientific research or technological work that did not directly provide for the creation of such a work belongs to the performer, unless otherwise provided by the contract between him and the customer.

In this case, when concluding a license agreement, the customer has the right to use the created work under the terms of a simple (non-exclusive) license for the entire duration of the exclusive right without paying additional remuneration for such use of the work. In addition, the customer can use this work only for the purpose specified in the contract. If the performer transfers the exclusive right to the work to another person, the customer will retain the right to use the work.

If the exclusive right to a work is transferred to the customer or a third party specified by him, the performer has the right to use the work created by him for his own needs under the terms of a free simple (non-exclusive) license during the entire period of validity of the exclusive right, unless otherwise provided by the contract.

The author of a work, who does not own the exclusive right to it, has the right to remuneration (Article 1295 of the Civil Code of the Russian Federation), the amount of which, the conditions and procedure for its payment by the employer, are determined by an agreement between him and the employee, and in case of a dispute, by the court.

On the transfer of rights to a work under a state or municipal contract

Unlike previous agreements, in accordance with Article 1298 of the Civil Code of the Russian Federation, the exclusive right to works of science, literature or art created under a state or municipal contract for state or municipal needs belongs to both the performer, who is the author or another person performing the state or municipal contract, and the Russian Federation, the performer and the subject of the Russian Federation, or the performer and the municipality, with the exception of cases established (clauses 3 and 4 Article 12401 Civil Code of the Russian Federation).

It should be noted that the right to obtaining a patent and the exclusive right to an IP object created during the execution of a state or municipal contract at the expense of the federal budget, the budget of a constituent entity of the Russian Federation or a local budget belongs to the Russian Federation, a constituent entity of the Russian Federation and a municipal entity, on behalf of which the state or municipal customer acts in cases where this object is necessary for the provision of state/municipal services or the implementation of state/municipal functions. And also in the case when the contractor, within twelve months from the date of acceptance of work under a state or municipal contract, has not formalized the exclusive right to an IP object or the object was created while performing work under a state contract in order to implement international and other obligations of the Russian Federation.

In conclusion, I would like to note that the formalization of contractual relations, taking into account the interests of both parties, is a complex and labor-intensive process that requires highly professional knowledge, and therefore requires the involvement of specialized specialists.