This licensing agreement might be used for background design artwork for a splash page or a comic book cover. With some modifications it could also be used to license a short story.
Artwork License Agreement –
This Agreement dated __________, 20__ (the “Effective Date”) is made by and between Beard-O-Brush, an artist, residing at ________________ (hereinafter, “Licensor” *1), and Carlo Creator, a comic book creator, residing at ________________ (hereinafter, “Licensee” *2). Licensor and Licensee may each be referred to herein individually as a “Party” and collectively as the “Parties.”
WHEREAS, Licensor is the owner of the Artwork (as defined below);
WHEREAS, Licensee is the creator of the Comic Book (as defined below);
WHEREAS, Licensee wishes to acquire the rights to use the Artwork on the cover of the Comic Book, and in any reprint of the Comic Book, as hereafter defined; and
WHEREAS, Licensor is willing to grant to Licensee, and Licensee wishes to accept, a limited license to the Artwork on the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises, and of the mutual undertakings herein contained, the parties, intending to be legally bound, agree as follows:
1. Defined Terms
(a) Artwork: the creative properties and other related intellectual property, their associated copyrights and trademarks, if any, created and/or controlled by Licensor and listed on Exhibit A.
(b) Comic Book: the original comic book, tentatively titled, “The Adventures of Maggot Man,” and any reprint or compilation thereof.
(c) Limited Purpose: *4 the acquisition by Licensee of the rights, throughout the Territory and Term, to use, or authorize others to use, Licensor’s Artwork on the cover of the Comic Book, in any reprint or subsequent edition of the Comic Book, and in any format now known or hereafter developed, including without limitation comic books, graphic novels, and digital equivalents *5, and in any promotion, marketing, or advertising related directly thereto *6, and as otherwise outlined herein. *7
(d) Territory: worldwide.
(e) Term: commencing on the Effective Date and continuing for as long as some version of the Comic Book is being sold *8 or until such time as this Agreement is terminated as provided herein.
2. Non-Exclusive License *9
2.1. During the Term, and subject to the provisions of this Agreement, Licensor hereby grants to Licensee and Licensee hereby accepts a limited, non-exclusive license to use, and to authorize others to use, the Artwork for the Limited Purpose, and for other purposes as described herein.
2.2. The rights granted hereunder shall include the right to reprint, and authorize others to reprint, the Artwork, in whole or in part, as part of an anthology or other similar work published in book, comic book, graphic novel, or trade collection form (in both hard and soft cover), or their digital equivalents.
2.3. The rights granted hereunder shall also include the right to crop, edit, and alter the Artwork, at Licensee’s sole discretion, so as to meet space restrictions or to enhance the effectiveness or function of the use of the Artwork. *10 Licensor hereby waives approval over how the Artwork is incorporated in the Comic Book. *11
2.4. All right, interest, and title in the Artwork shall be retained by Licensor. *12 Licensor may use the Artwork in any manner whatsoever or for any purpose, provided, however, that Licensor does not permit or authorize the publication of the Artwork from the Execution Date until it has been published in connection with the Comic Book. *13
3.1. In consideration for the rights granted to Licensee herein, Licensee agrees to pay Licensor and Licensor agrees to accept the following payments, payable as follows:
3.1.1. $___________ upon execution of this agreement, receipt of which is hereby acknowledged;
3.1.2. $___________ upon receipt by Licensee of the Artwork, and in the manner specified in Section 4 below; and
3.1.3. $___________ payable in the event that the Artwork is reprinted or included, in whole or in part, in any anthology and due upon publication of any such reprint or anthology. *14
4.1. Not later than ____________, 20__, Licensor agrees to deliver to Licensee the Artwork in the following formats:
4.1.1. A Photoshop PSD file suitable for reproduction of the Artwork, and no less than 300 dpi; *15
5. Copyright and Trademark Usage and Ownership *16
5.1. Licensee acknowledges and agrees that all right, interest, and title in the Artwork and any alterations, modifications or improvements made to the Artwork by Licensee shall be retained by Licensor. *17
5.2. Licensee acknowledges and agrees that the Artwork is unique and original to Licensor and that Licensor is the owner of all underlying rights in the Artwork including trademarks, copyrights, and any rights in concepts, designs, and ideas. Licensee shall not, at any time during or after the Term, contest or dispute, directly or indirectly, Licensor’s exclusive right and title to the Artwork or the validity thereof, unless otherwise permitted by law. As between Licensee and Licensor, the Artwork and their associated rights and good will shall remain the complete and exclusive property of Licensor.
6. Credit, Copyright Notice *18
6.1. Licensee shall credit Licensor on all publications, if any, that utilize the Artwork under the terms of this Agreement, and Licensee shall include all notices, markings, and legends in connection with the Artwork as are, or may be required, by applicable laws and by Licensor in order to give appropriate copyright notice, such as: © (name of copyright owner, date of copyright).
6.2. Notwithstanding anything to the contrary contained in this Agreement, in no event shall Licensor seek, or be entitled to, damages of any kind by reason of any breach or threatened breach of any of the credit requirements herein, nor shall Licensor be entitled to seek to enjoin or restrain the exhibition, distribution, advertising, exploitation, or marketing of the Comic Book, all such equitable remedies being expressly waived by Licensor. No casual or inadvertent failure to comply with credit requirements shall be deemed a breach of this Agreement.
7. Representations and Warranties
7.1. Each Party represents and warrants that it has the right to enter into and perform under this Agreement.
7.2. Licensor represents and warrants the following: *19
7.2.1. Licensor has the right to grant the rights herein; *20
7.2.2. Licensor is the sole author of the Artwork and the Artwork is original and created by Licensor; 7.2.3. the Artwork does not violate any rights of privacy, publicity or any other right of any person;
7.2.4. the Artwork does not infringe upon the copyright, trademark or other intellectual property right of any other person;
7.2.5. the Artwork is not obscene or libelous; and *21
7.2.6. there are no third-party agreements by or on behalf of Licensor, her affiliates, or assigns that would violate or otherwise interfere with the exclusive rights granted to Licensee herein.
7.3. These representations and warranties shall survive the termination of this Agreement.
8. Publicity *22
8.1. Licensee shall have the right to use, reproduce, display, disseminate, publish, print, and make any other uses of Licensor’s name and biographical information in connection with the marketing, advertising, and exploiting of the Comic Book.
9.1. Upon termination or expiration of this Agreement, all rights granted herein shall immediately revert back to Licensor, Licensee shall immediately cease all use of the Artwork, and all payments, if any, shall be accelerated and become due and payable.
9.2. Licensor may terminate this Agreement and all licenses granted therein, having provided Licensee with thirty (30) days’ notice, and upon the occurrence of the following events:
9.2.1. If Licensee fails to publish the Comic Book in any form within ___ years of Licensor’s execution of this Agreement; *23
9.2.2. Licensee fails to make any payments within thirty (30) days from the date they became due, and fails to cure within 14 days of notice by Licensor. *24
10. Assignment. *25 Licensee may assign all rights in and to the Comic and its derivatives created pursuant to the Licensed Purpose, in whole or in part to any firm, corporation, or person.
11. Indemnification *26
11.1. At all times, Licensor shall indemnify, defend, and hold harmless Licensee, his successors, licensees, agents, assigns, employees, and/or representatives from and against any and all liability, damages, loss, costs and expenses, of any kind (including reasonable attorneys’ fees) from any action, claim, or demand arising out of any breach by Licensor of any warranty, representation or covenant contained in this Agreement.
11.2 At all times, Licensee shall indemnify, defend, and hold harmless Licensor, his successors, licensees, agents, assigns, employees, and/or representatives from and against any and all liability, damages, loss, costs and expenses, of any kind (including reasonable attorneys’ fees) from any action, claim, or demand arising out of any breach by Licensee of any warranty, representation or covenant contained in this Agreement.
12. Notices *27
12.1. Except as otherwise provided herein, all notices shall be in writing and specify with particularity the nature of the other party’s default. All notices shall be delivered by overnight courier, personal delivery or in the form of a certified or registered letter.
13. No Partnership
13.1. Nothing in this Agreement shall be interpreted to create a joint venture, partnership, or agency relationship between the parties. *28 Licensor shall be acting solely as an independent contractor and not as a joint-venturer, agent, partner, or employee of Licensee.
13.2. In the event that Licensor retains an associate or assistant in connection with the production or delivery of the Artwork, any costs or expenses incurred therefrom shall be Licensor’s sole responsibility, and under no circumstances shall any such associate or assistant be, or be deemed to be, an employee or agent of Licensee. *29
14. Remedies, Choice of Law
14.1. In the event of breach of this Agreement, the sole remedy of the non-breaching party shall be limited to an action at law for monetary damages actually suffered. In no event shall the parties be entitled to injunctive or equitable relief.
14.2. This Agreement shall be construed, interpreted, and governed by the laws of the State of New York. The federal or state courts of competent jurisdiction located in the State of New York, County of New York, shall have sole and exclusive jurisdiction to hear and determine any dispute or controversy arising under or concerning this Agreement, and both parties each hereby waive any objection and submit to the in personam jurisdiction and venue of such court.
15. Further Documents
15.1. Licensor agree to execute and deliver all additional documents, papers, and other instruments that might be necessary to further the intent of this Agreement, including written releases from all persons whose likenesses may appear in the Artwork.
16. Entire Agreement *30
16.1. This Agreement constitutes the entire agreement between the parties hereto on the subject matter hereof and supersedes and replaces all prior and contemporaneous oral or written agreements, and understandings, nor have the parties relied upon any writings or representations whatsoever not incorporated herein and made a part hereof. This Agreement may only be modified by a fully-executed written amendment, signed by both parties, and containing the words “Agreement Amendment” in the title.
17.1. If any provision of this Agreement is adjudged void, unenforceable or unlawful, in whole or in part, by a court of competent jurisdiction, the remaining provisions shall continue in full force and effect.
18.1. The following clauses shall survive the termination of this Agreement, whether by breach or otherwise: “NONEXCLUSIVE LICENSE,” “PAYMENT,” “COPYRIGHT AND TRADEMARK USAGE AND OWNERSHIP,” “REPRESENTATIONS AND WARRANTIES,” “INDEMNIFICATION,” “REMEDIES, CHOICE OF LAW,” “SEVERABILITY,” and “SURVIVAL.”
19.1. This Agreement may be executed in several counterparts, and all counterparts so executed shall be deemed an original, and all of such counterparts shall constitute only one agreement. Scanned and facsimile copies shall be deemed originals for all purposes. If the Agreement is signed in counterparts, it shall only be effective upon delivery of one executed counterpart from each party to the other party.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by their duly authorized signatories to be effective as of the Effective Date. Any individual executing this Agreement on behalf of any Party hereto does hereby represent and warrant that such execution is made with full authority and that such Party is bound by the terms hereof.
LICENSEE: Carlo Creator
EXHIBIT A *31 Artwork The specific Artwork subject to this Agreement is as follows:
The Artwork is subject to copyright registration # ###, and/or other such copyright and trademark registrations as are filed by or on behalf of Licensor, from time to time. Exploitation by Licensee of any additional artwork created by Licensor than that which is specifically enumerated in this exhibit shall require an additional license, mutually agreed upon and signed by all parties.
— COMMENTS —
1 LICENSOR—The person granting the license to you to include their work in your comic
2 LICENSEE—The person receiving the license to use the artwork in their comic (you in this case).
3 The Recital section of a contract, often beginning with the word “WITNESSETH,” gives the background of why the parties are entering into the contract. Courts usually give this section less legal weight in determining a contract’s meaning, so try to avoid defining any terms here.
4 Here the rights being sought are just to incorporate the artwork in comic books. If additional rights, such as multimedia or merchandising rights were being requested, these defined terms would have to be adjusted accordingly.
5 This grant language is more narrowly tailored to apply only to comic books and graphic novels, as opposed to movies, or merchandise, etc.
6 Because commercial use is usually treated separately from how rights are used within the Comic Book property, you may have to secure permission separately to use any right to promote or advertise your book.
7 In creating a definition for “Limited Purpose” make sure it encompasses all the rights granted in the Agreement.
8 Keep in mind that under the terms of this agreement, once the comic book is no longer sold, the license expires. Another variation—which may cost more money—is to request perpetual grant.
9 Non-exclusive license means the same rights can be granted to other third parties—including those who compete directly with your comic book, such as other comic book creators. If you want a more exclusive grant, or if you want the licensor to refrain from competing uses, you may have to pay more money for the licensed Artwork.
10 It is important to reserve for yourself the right to modify and edit the Artwork.
11 This is a pretty broad waiver of approval rights, and very favorable towards you, the Licensee. However, some Licensors may not want to waive approval, or may only grant approval once they’ve seen how you plan to use their work.
12 Here the contract clarifies that the Licensor retains ownership of the work that he is providing.
13 This optional language is a “hold back” provision: it compels the Licensor to refrain from publishing the Artwork until you have published a comic book. Obviously, in many cases this will not be appropriate—such as when the artwork has been previously published.
14 A flat fee is often the easiest way to license Artwork. However, for certain deals, royalty provisions may be more appropriate (for instance, if the Artwork plays a primary role over several issues, or is being used in the creation of merchandising.)
Additionally, for licensing of short stories, royalty payments are almost always a part of the deal—often both a page rate and a royalty is paid to the writer in such cases.
For further ideas on how to structure these royalty provisions, as well as the audit clauses which should accompany them. (See Illustrator Services Agreement, p. 139.)
15 Obviously, adjust the file format and resolution to meet your needs . . . And the needs of your publisher.
16 This clause further underscores the Licensor’s ownership of the underlying rights in the Artwork.
17 Be careful here! If you add to the artwork or improve upon it, such improvements will be owned by the Licensor under the terms of this clause.
18 Not only is it important to give the Licensor credit and proper copyright attribution, it is critical for the licensee—you—to have the licensor waive the ability to sue you for a mistake in the credit requirements.
19 Since you are the Licensee in this scenario, it’s best to have the Licensor make absolute representations and warranties. In other words, the Licensor should state that the promises that they are making in this section are absolutely true (as opposed to merely being “true to the best of Licensor’s knowledge and belief”). However, the Licensor may respond that these reps and warrants should be qualified with “To the best of Licensor’s knowledge and belief . . .” because he might not know if his Artwork violates some obscenity law in another country. For more on this, see Representations and Warranties, p. 422.
20 This is the warranty of authority—here the Licensor is promising that he has the rights to grant and that he is the one empowered to grant the rights.
21 You want to make sure that the work that you’re licensing is free from potential infringement and other third-party claims.
22 Especially when it comes to using a famous cover artist’s work, you may need the right to use the artist’s name, photo, and other biographical info in publicizing your book.
23 Termination of a licensing agreement for failure to publish the comic book is fairly common.
24 Licensors will almost uniformly insist on terminating a license if they aren’t being paid.
25 The right to assign the licensed rights is critical. Without it, the publishing company would not have the right to publish your book (you will be assigning certain rights in your book to the publishing company; those rights include the right to publish the Artwork that is the subject of this agreement).
26 This indemnification provision ensures that both parties will be responsible for paying any damages the other party incurs which result from misrepresentations in his representations and warranties or his other breaches of this agreement.
27 How one sends a “notice” to the other party is important. The way this clause is drafted e-mail is not an acceptable form of notice, so any notice sent by e-mail might not be considered putting the other party on notice.
28 Remember: the law can see two people working together for a common business purpose as partners. You want to make sure that you are explicit in saying the Licensor is not your partner.
29 Does the Licensor need to hire other artists to help him prepare the work? This clause ensures that those costs are borne by the Licensor, not you.
30 This is one of the most important clauses in the contract. After the agreement is signed, parties often conduct their business relationship in a way which may be seen as a modification of the agreement—sometimes leading to unintentional results.
The way this clause is drafted, the only way to modify this contract is to have a separate written, signed amendment, which clearly states that it is an amendment. This avoids the problem of “e-mail drift”—e-mail correspondence between the parties that inadvertently changes the contract’s terms.
31 It is critical to clearly define which artwork is at issue. Is there may be several versions of the artwork produced by the artist. Therefore, a detailed Exhibit A in which samples of the artwork are attached, along with the appropriate copyright registration information, should help provide clarity.
32 INSERT PICTURE OF ARTWORK
Excerpt from Pocket Lawyer for Comic Book Creators: A Legal Toolkit for Comic Book Artists and Writers by Thomas A. Crowell, Esq. © 2014 Focal Press an imprint of Taylor and Francis Group. All Rights Reserved.