Intellectual property transactions often involve a range of interrelated legal relationships. The parties may need to regulate not only the assignment of an existing exclusive right or the grant of a license, but also the creation of a new intellectual property object, acceptance of the result, transfer of tangible media, technical support, confidentiality, and liability for third-party claims.

Complex contracts allow obligations of different legal natures to be combined within a single document. They are particularly common in software development, website creation, design and advertising, audiovisual content production, research and development, and technology transfer.

The Civil Code of the Russian Federation does not recognize a complex contract in the field of intellectual property as an independent type of contract. Its terms are determined with due regard to the principle of freedom of contract, the provisions of Part Four of the Civil Code, and the nature of the obligations undertaken by the parties.

Legal nature of a complex contract

In practice, a complex contract may cover several interrelated stages involving an intellectual property object, including its creation or modification, transfer to the customer, disposal of the exclusive right, and related services. Its legal qualification depends not on its name, but on the substance of the obligations it contains. Under Paragraph 3 of Article 421 of the Civil Code of the Russian Federation, the parties may enter into a contract containing elements of different types of contracts provided for by law or other legal acts.

Accordingly, a complex contract may qualify as a mixed contract if it combines elements of several contractual structures. For example, a software development agreement may cover the creation of a computer program, assignment of the exclusive right or grant of a license, transfer of technical documentation, implementation and subsequent maintenance.

However, the presence of several obligations does not necessarily make a contract mixed. Some obligations may be ancillary and serve to implement the primary contractual arrangement. The applicable legal rules must therefore be determined based on the substance of each obligation.

A complex agreement may concern either an existing intellectual property object or a result to be created in the future. In the former case, the key issue is the disposal of the existing exclusive right. In the latter, the agreement should additionally regulate the creation process, requirements for the result, and its delivery and acceptance.

Disposal of the exclusive right to an existing object

Under Paragraph 1 of Article 1233 of the Civil Code of the Russian Federation, the right holder may dispose of the exclusive right belonging to them in any manner that does not contradict the law or the nature of such right. The principal contractual methods are the assignment of the exclusive right and the grant of a license.

Under an agreement on the assignment of the exclusive right, the right holder transfers or undertakes to transfer the exclusive right to the acquirer in its entirety. The former right holder then ceases to hold the exclusive right, while the acquirer becomes the new right holder.

A license agreement does not involve such a transfer. The licensor retains the exclusive right, while the licensee may use the intellectual property object within the scope and limits specified in the agreement. Pursuant to Paragraph 3 of Article 1233 of the Civil Code of the Russian Federation, an agreement that does not expressly provide for the transfer of the exclusive right in its entirety is generally presumed to be a license agreement.

Accordingly, wording such as “transfer of copyright,” “transfer of ownership of the result” or the right to use an object “at one’s own discretion” does not necessarily establish the parties’ intention to assign the exclusive right. The agreement should expressly specify whether the exclusive right is transferred in its entirety or whether a limited right of use is granted.

The title of the agreement is not decisive. A contract may be titled as an agreement for development, cooperation, implementation, or the provision of services, but its provisions concerning intellectual property rights must comply with Part Four of the Civil Code.

Creating a new object and transferring rights to it

Where the intellectual property object does not yet exist, the agreement should regulate both its creation and the subsequent disposal of the exclusive right. The contractor may undertake to develop software, create a design, write a text or produce photographs, video materials or another intellectual property object in accordance with the customer’s requirements. The parties should determine who will hold the exclusive right to the resulting object and the scope of the customer's rights to use it.

If the work is created directly by an individual who is the author, the relationship may be governed by Article 1288 of the Civil Code concerning an author’s order agreement. Where the contractor is a legal entity or an individual entrepreneur engaging other persons, the agreement will generally not qualify as an author's order agreement. Depending on its substance, it may instead be subject to provisions governing contracting, paid services, research and development work, technological work, and the special rules of Part Four of the Civil Code.

The contractor should be required to settle relations with all authors and other right holders involved in creating the object, obtain the necessary rights and consents, and provide supporting documents at the customer's request. The agreement may also include warranties against infringement of third-party rights and establish the contractor's liability for related claims.

Basic terms and content of a complex contract

The agreement should clearly define the intellectual property object and the scope of the rights to be transferred. An existing object must be identified, while a future result should be described through its characteristics, content, form, development requirements, and acceptance criteria. These requirements may be set out in the terms of reference.

The parties should expressly specify whether the exclusive right is assigned in its entirety or whether a license is granted. In the latter case, the agreement should define the permitted methods of use, type of license, term, and territory. Methods of use not expressly granted are generally not deemed to have been granted to the licensee.

The agreement should also establish the remuneration for the assignment or license, or a mechanism for determining it. Where works or services are provided alongside the transfer or grant of intellectual property rights, it is advisable to distinguish the corresponding payments. The parties should also specify when the exclusive right is transferred, for example upon creation of the object, execution of an acceptance certificate, or full payment.

Where state registration is required, the agreement should establish the procedure for filing the relevant documents, applicable timeframes, and allocation of costs. At the same time, exclusive rights may be assigned or licensed, whereas authorship, the author’s right to be identified by name, and other moral rights are inalienable. The possibility of modifying the work or using it without identifying the author should therefore be addressed separately, subject to applicable law.

All documents forming part of the contractual relationship – including the main agreement, terms of reference, specifications and acceptance documents – should be consistent with one another. This is particularly important where employees, co-contractors or subcontractors are involved, as the contractor must have the rights necessary for the subsequent assignment or grant of rights to the customer. An unclear definition of the object, confusion between assignment and licensing, the absence of agreed methods of use or an indeterminable remuneration mechanism may lead to disputes over the conclusion or legal qualification of the agreement. In the event of a dispute, the court assesses the agreement and related documents as a whole to establish the parties’ actual common intention.

Thus, complex contracts provide a flexible framework for structuring intellectual property transactions. There is no universal form of such an agreement: its content depends on the type of intellectual property object, the parties involved, the method of disposing of the exclusive right, and the intended use of the result.

When drafting such an agreement, the parties should clearly define the object, scope and methods of use, type of right being transferred or granted, remuneration, timing of the transfer or grant, registration procedure, and liability. Consistency among these provisions helps make the parties’ relationship more predictable and reduces the risk of subsequent disputes.