May 3, 2021

The management of Intellectual Property Rights in/to E-Learning Courses and Materials is critical for the long-term success of E-Learning Companies ( more information on this available at: https://elearningindustry.com/intellectual-property-rights-in-elearning ).

That is why the establishment of an Intellectual Property Policy (“IP Policy”) is recommended to set out the contractual basis by which the E-Learning Company, (i) provides each of its users ("User(s)") with its Intellectual Property, and (ii) is assigned the Intellectual Property Rights in/to the Online Courses (which are offered by the E-Learning Company on its E-Learning Platform) by each of its Online Course Developers (“Trainer(s)”) if any.

PURPOSE OF THE IP POLICY

The E-Learning Company may put in place an IP Policy in order to protect its own Intellectual Property and minimize the possibility of infringement by the E-Learning Company of any third party’s Intellectual Property Rights.

An IP Policy aims to provide transparency for the ownership, control and transfer of the Intellectual Property created by Trainers for the E-Learning Company, and ultimately owned by the E-Learning Company.

WHO DOES THE IP POLICY APPLY TO?

An IP Policy applies to and binds (i) each User of the E-Learning Platform, (ii) each Trainer, and (iii) the E-Learning Company.

DEFINITIONS

The IP Policy typically defines two (2) central terms namely Intellectual Property and Intellectual Property Rights:

• “Intellectual Property”: Registrable and non-registrable inventions, creations, innovations, art work, literary text, expertise, trademarks, trade secrets, designs and other matters which have been created through the mental efforts, insight, imagination, knowledge and creativity of human intervention, that may be capable of legal protection or the subject of legal rights, as granted by national laws and which may include the following items: registered trademarks; unregistered trademarks used or intended for use in business; registered designs and designs capable of being registered; databases; and other rights resulting from intellectual activity in the industrial, commercial, scientific, literary and artistic fields (more information about E-Learning Contents and their 'Intellectual Property' nature available at: https://www.ispringsolutions.com/blog/is-e-learning-content-intellectual-property ).

• “Intellectual Property Right(s)”: Right(s), title(s) and interest(s) conferred by the law to creators, inventors or authors (or any of their assignees/transferees) in/to their created/invented/authored Intellectual Property in order to protect such creators, inventors or authors (or any of their assignees/transferees) against such Intellectual Property being appropriated by third parties. Intellectual Property Rights may include: copyrights, rights in information which has been communicated in such a way as to give rise to a duty of confidentiality (including know how and trade secrets); copyright vesting in literary works (including computer programs), dramatic works, musical works, artistic works, films, sound recordings, multimedia works, broadcast, published editions and certain types of performance; patents, rights in inventions, rights in designs, trademarks, trade and business names and all associated goodwill, rights to sue for passing off or for unlawful competition, copyright, moral rights and related rights, rights in databases, topography rights, domain names, and all other similar or equivalent rights existing in the E-Learning Company's Online Courses, Website/Platform and services.

SECURITY, PROCEDURES & RECORDS

Under the IP Policy, the E-Learning Company should provide that it will :

(i) conduct its business in compliance with all applicable Intellectual Property laws;

(ii) actively protect and safeguard its own Intellectual Property;

(iii) maintain an inventory and records of Intellectual Property assets and agreements with Users, Trainers and any third party vendor;

(iv) not knowingly infringe upon any third party's Intellectual Property Rights, or use any third party’s Intellectual Property Rights without the express consent of such third party owner or as permitted by law;

(v) not knowingly purchase or use counterfeit or other infringing products and services in conducting the E-Learning Company’s business, including counterfeit products or copyright infringing material (such as software, publications, video, audio, or other content);

(vi) document and maintain written records of all substantial transactions and the manner in which our Intellectual Property is used, including but not limited to (1) licenses or assignments of rights; (2) reproduction or distribution of patented, trademarked or copyrighted items; and (3) disclosure and use of trade secrets; and

(vii) require, through binding policies or through the execution of binding agreements (between the E-Learning Company and each User, and/or between the E-Learning Company and each Trainer) to comply with all applicable Intellectual Property laws, the E-Learning Company’s IP Policy and Intellectual Property-related provisions contained in agreements between the E-Learning Company and third party vendors.

OWNERSHIP OF INTELLECTUAL PROPERTY

Under the IP Policy, the E-Learning Company and the Trainer shall each retain ownership of their respective information, materials, products, services, content, graphics, text and other materials utilized by the E-Learning Company and each Trainer in connection with the creation, development and distribution of the Online Courses on the E-Learning Company’s E-Learning Platform:

(i) Ownership of Online Courses (Foreground Intellectual Property). It is in the E-Learning Company's best interest to provide within the IP Policy that the developed Online Courses and all contents included therein (collectively the "Foreground Intellectual Property " which is the Intellectual Property generated by the Trainer while working for the E-Learning Company) shall constitute “ work made for hire ” (as defined under the applicable national law) commissioned by the E-Learning Company, and as such, the E-Learning Company shall be the sole and exclusive owner of all copyrights, trade secrets, patents and other Intellectual Property Rights in/to the Online Courses. All Foreground Intellectual Property created by the Trainers for the E-Learning Company should, to the maximum extent legally possible, be registered in the E-Learning Company’s name or assigned/transferred to the E-Learning Company, and all titles, rights and interests in/to such Foreground Intellectual Property should vest in the E-Learning Company.

(ii) Transfer/Assignment of the Pre-Existing/Background Intellectual Property Rights. Under the IP Policy, as per the applicable Online Course Development Services Agreement executed between the E-Learning Company and each Trainer (if any), the Trainer should assign to the E-Learning Company, the Trainer’s full right(s), title(s) and interest(s) in/to any and all of the Trainer’s information, materials, content, graphics, text and other materials (collectively the "Trainer’s Pre-Existing/Background Intellectual Property") incorporated by the Trainer into the developed Online Course(s). As such, the IP Policy should state and warrant that such Online Course Development Services Agreement (if any), includes, amongst other provisions, an indemnity provision, whereby the Trainer indemnifies the E-Learning Company from/against any third party claim asserting that any of such Trainer’s Pre-Existing/Background Intellectual Property infringes upon such third party’s Intellectual Property Rights.

(iii) Warranty. Within the IP Policy, the Trainer must warrant to the E-Learning Company that all information, materials, content, graphics, text and other materials incorporated by the Trainer into the Online Course(s), (a) is the Trainer’s original creation, or (b) if not owned by the Trainer, is licensed to the Trainer by the relevant third party who/which owns such information, materials, content, graphics, or text. The Trainer must be solely responsible for obtaining written permission from the third party owner of such non-original work. The IP Policy must require that a copy of such written permission from the third party Intellectual Property Right owner/holder must be provided by the Trainer to the E-Learning Company prior to developing the Online Course(s).

(iv) Indemnification. The IP Policy should provide that Trainer agrees to indemnify, defend and hold the E-Learning Company harmless from and against all suits, actions, causes of action, judgments, costs and damages arising from any third party claim of infringement BY the Online Course(s) (or any information, element(s), material(s), content(s), graphic(s), text(s) and other materials therein) developed by the Trainer OF such third party’s Intellectual Property Rights, UNLESS, HOWEVER, the allegedly or factually infringing part(s) of the developed Online Courses (i.e. any information, element(s), material(s), content(s), graphic(s), text(s) and other materials therein) was/were provided to the Trainer by the E-Learning Company.

NOTICE OF INFRINGEMENT

The IP Policy must also assert that it is the E-Learning Company’s policy to respond to any third party Intellectual Property Rights infringement notice(s) and to take the appropriate action(s) in relation to such infringement-related claim or notice. In the event that any User believes that any activity and/or material available on/in the E-Learning Platform/Website, Online Courses or services infringes upon any User's/third party’s Intellectual Property Rights, such User shall notify the E-Learning Company by submitting a written notice and include the following information:

(i) User's full name, mailing address, telephone number, and email address;

(ii) a description of the Intellectual Property Right(s) that is/are claimed to be infringed;

(iii) a description of where the allegedly infringing material is located on/in the E-Learning Platform/Website, Online Courses or services;

(iv) a statement by such User that User has a good-faith belief that the alleged infringing use is not authorized by the Intellectual Property Right owner/holder, its agent, or the law; and

(v) a signed (either physical or electronic) statement by such User, made under penalty of perjury, that the above information in User's notice is accurate and that such User is (1) the owner/holder of such Intellectual Property Rights, or (2) authorized to act on behalf of such Intellectual Property Rights' owner/holder.

Upon receipt of such written notice, the E-Learning Company shall investigate and/or remove the infringing material. Any User will be held liable for damages, including costs and attorneys’ fees, if any such User materially misrepresents that any material or activity on/in the E-Learning Platform/Website, Online Courses or services infringes on a User's or a third party’s Intellectual Property Rights.

TRADEMARKS & COMPLIANT USE OF THE E-LEARNING PLATFORM

The IP Policy must finally provide that the E-Learning Company is the owner of the E-Learning Platform and various registered and unregistered trademarks, and therefore reserves all its rights in/to any such trademarks (including but not limited to the E-Learning Company’s name, logo, domain names, and website).

The use by Each User/Trainer of the E-Learning Company's Website/Platform and trademarks must comply with (i) the E-Learning Company’s Terms of Service (between the E-Learning Company and each User), (ii) the Online Course Development Services Agreement (between the E-Learning Company and each Trainer), and (iii) the IP Policy itself. Lastly, the use, by each User/Trainer, of the E-Learning Platform’s trademarks for private purposes or gain must be strictly prohibited.

CONCLUSION

Because drafting an IP Policy may be tricky please do not hesitate to contact us if you need us to assist you in establishing a legally waterproof IP Policy customized to your business model!

Dr. Ariel Humphrey & Dr. Rushmina Murtuza