"Work-for-hire" and copyright 4

[glass99]

We are doing some work for an advertising agency for the first time, and one of their standard requirements for any designer is that they sign a work-for-hire agreement meaning that any intellectual property developed is the copyright of the agency.

While I have zero interest in doing anything with the copyright outside of this project, I am a structural engineer and am used to the legal basis of my liability control being that I own the copyright and am granting it for a one time use to my client. Has anyone ever faced this before?

[Yes I know this is a legal question and I should talk to a lawyer]

 

[phamENG]

glass - I read an article recently on this issue and why it's important to hold your ground. It also gives some tips for negotiating to at at least remove the teeth from the agreement, so you maintain the rights to your work product but they still have a warm fuzzy about the whole thing. I'll see if I can find it...

 

[phamENG]

This isn't it, but it's saying roughly the same thing: [URL unfurl="true"]https://jordanramis.com/resources/articles/who-owns-the-design/view/[/url]

And best of all, it's from an attorney!

 

[TheTick]

I've seen this issue with graphic designers and even some CAD designers. Problems arise because the statement of deliverables is too vague.

Most graphic design gigs entail delivering a final design to the customer, while the designer maintains ownership of all the underlying property required to make the final property. i.e. Designer delivers a finished print-ready brochure, but still owns all his raw art, photos and negatives, layout files etc.

3D analog: industrial designer agrees to deliver final 3D shape, not all the CAD and drawings and sketches and broken pencil leads that went into making the final.

I've seen the conflict many times where the client asks for all the underlying stuff so they can do whatever they wish with it. There's always anger and a sense of entitlement on the part of the client, but the contract has the final say.

 

[dik]

I do work for a lot of companies. I make it quite clear that any of my programs are mine... I have no difficulty sharing my programs... if I develope a program for use on the project, I do it on my time and they are not billed for this time... Only occasionally has this been an issue, and then only for larger firms... but they generally agree... only once did I 'walk'. Same with drafting and blocks...

Rather than think climate change and the corona virus as science, think of it as the wrath of God. Feel any better?

-Dik

 

[Settingsun]

the legal basis of my liability control being that I own the copyright and am granting it for a one time use to my client

Does this work? I'd have thought that copyright wouldn't be related to whether you are found to be/not to be the designer of a re-used design.

I'm in another country but still common law, and our solicitors don't push too hard on IP ownership. Our standard terms have us owning project IP, but client contracts mostly have it the other way. Sometimes we manage to get a clause that ownership transfers upon payment instead of creation, but that's it. Our solicitors are pretty cautious so I think that transfer of project IP ownership isn't a huge risk (in Australia). Background IP remains ours as per PhamEng's article.

 

[glass99]

I think that transfer of project IP ownership isn't a huge risk (in Australia)

you would think a structural engineer wouldn't have to worry about copyright, but the lawyers make it complicated. It's frustrating that I even have to think about it bc my non-lawyer project manager client doesn't understand why I am refusing to sign her document.

thanks for the link PhamEng. The whole instruments of service thing is super critical for our liability control too, and is wrapped up in the copyright concept. The whole thing is you want copyright law as opposed to product law.

 

[dik]

link is excellent...

Rather than think climate change and the corona virus as science, think of it as the wrath of God. Feel any better?

-Dik

 

[phamENG]

thanks for the link PhamENG.

link is excellent...

You're most welcome. Thanks, dik. It either came up in Structure or Modern Steel recently, or it was in a blog from my insurance broker. So I knew the topic was covered - fortuitous timing.

It's interesting because I just came away from a year of employment with a corporation with the same demands you're facing, glass99. I can understand where their coming from, and now that I know what's like to wear both pairs of shoes, I really like some of the suggestions they lay out for satisfying both sides.

 

[CWB1]

IME IP discussions are a normal part of contracted design work. Ultimately it all depends on how the contract is written and what the customer wants, but it’s fairly standard for the customer to own all IP whether patents or copyrights, just as they own all models, prints, simulations, and calcs otherwise. I have always been told to review contract exclusions before using any internal IP bc if its not specifically listed and ends up being used then the customer can stake a claim. JME, didn’t sleep in the Holiday Inn or claim to be a lawyer.

 

[drawoh]

glass99,

A very, very long time ago, I was offered a contract job and sent a contract to sign. There was all sorts of intellectual property stuff which implied that anything I did anywhere, anyhow, belonged to the client. I called my agency, and they told me to cross out and initial any part I did not like. I did so, and nobody said anything. I was being hired as an office clerk, so I am sure nobody cared.

Call your customer and ask.

--
JHG

 

[IRstuff]

In particular, military contracts allow for pre-existing IP to be separately identified and segregated; that's something else that can be added to the contract to protect your IP.

TTFN (ta ta for now)
I can do absolutely anything. I'm an expert!

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[glass99]

I don't care about owning the IP from the point of view that I want to resell this design to others (it has pretty low value in that regard for this project at least). I do care about being subject to professional services/copyright law and not product law for liability reasons. Also, if they make 10 copies of this thing (which is a realistic possibility), my liability goes up 10 times but my fee is the same.

 

[Settingsun]

What will you be giving them? They can make ten of something without violation copyright on a drawing (for example) if they work from the original drawing you provide them. I think you need to define the scope of services rather than hope copyright will save you. If they're engaging you to produce a generic design for re-use, that's what you'll be liable for.

But I recognise that the client being an advertising agency means this might be some unusual form of engineering.

 

[glass99]

What will you be giving them?

The end product is an "experiential marketing" object designed to get social media / news attention etc. My deliverable will be a stamped engineering report and drawings. I can to an extent cover myself against us being liable for copies by saying in the engineering report that this object is only engineered for site conditions at this one particular site. The client is very keen to hold onto copyright in part to stop their competitors from stealing the idea.

 

[phamENG]

glass - best bet is probably to offer them some sort of agreement that commits you to not divulging the details of your design to anyone else. You retain the copyright, but they retain exclusive use of the end product subject to your license agreement.

Your concern is justified. A colleague of mine designed a large building for a client. Got a call a couple years later from a building official in a different county with questions about the building. Thinking it was strange, he asked for a copy of the drawings. The original client had put a new address on the title block and resubmitted it to build the same building again. He sent a fee for the second use to the client with an ultimatum - deliver payment by COB next day or the next call would be from his attorney for copyright infringement and violation of contract. He got the check.

For the mechanical guys - I agree. My last employer hired mostly mechanical and electrical engineers to design large scale industrial equipment. Most of the work was proprietary, and so we insisted on owning everything. It typically works differently in the Civil/Structural world. I guess it has to do with our lack of prototyping. With a lot of the equipment we were getting, it would be designed, delivered, and run through a series of tests to confirm that it works. Once it's done, that's it. We weren't manufacturing more of them, but we owned the rights to it (we essentially funded the testing process) and prevented it from being used for a competitor. In structural design, though, we design it and it gets built. There's very little testing to make sure it "works" under design conditions, because design conditions are relatively extreme and often result in damage anyway. Our clients are often another step in the design chain or a contractor, so there's a very real possibility that they will go on to make another one and, if they do so, our liability increases as there's a chance of a mistake in the design being replicated without notice.

 

[Settingsun]

This discussion is an eye opener. Do US engineers not have contracts that define scope, including location/address?

Phameng, was your colleague not obligated to report the fraud? I'd have thought it would be an ethics condition of your state registration system.

 

[phamENG]

As I recall, that particular client was an owner, not an engineer, architect, or contractor - so there wouldn't have been an ethics violation.

And yes, every proposal/contract I write and/or sign specifies the scope (in varying degrees of specificity) and the location of the structure.

 

[Settingsun]

I didn't mean the fraudster's ethics, but an obligation to report engineering w/o licence or unauthorised use of seal (I'm assuming sealed drawings since some building official had them, and my knowledge of the US system comes only from this forum).

 

[phamENG]

Good point. I could see it going either way. Again, as I recall from the telling of the story, nothing about the design itself was changed. The only thing that was modified was the address. So I'd say the problem was more in violating the license of the design, rather than trying to pass of the design as something fundamentally different.