Contractor Stealing My Plans 4

[bigmig]

Found out today that my "friend" who had mysteriously stopped asking us to design his houses for a 2 year period had been deleting the title block, adding the home address, and developing without us. What things can we do to prevent this from happening in the future? Some note on the plans requiring engineer confirmation? A special title block? We used a particular font, which he wasn't smart enough to find. A surveyor contacted us asking for our cad work to stake foundations. He sent us "our" plan set, and we didn't recognize the owner or address.

 

[gte447f]

the homeowner who hires the contractor who then hires the engineer has no contractual relationship with the engineer. Therefore, any damages due to inadequate design will have be collected from the contractor

This is privity. It is a contract law thing. I think there may be some exceptions to this general principle. Separately, torts may give rise to noncontract liability for third parties. I am not an attorney, so I know not of what I speak. I just know that design professionals get sued a lot.

However, the contractor is unlikely to swallow that loss, and will in turn sue the engineer for giving them a bad design. So the liability still exists, just through a different path.

Exactly. You can count on it. Although, maybe not in the case of the OP, since the contractor used the plans without the OP/engineer's knowledge. That would seem pretty brazen of the contractor to then try to blame the OP for any errors, but contractors tend to do brazen things, so who knows.

Regarding the IP question, I think general principles within the AEC industry and the specific circumstances of the OP's situation make it pretty clear that the OP owned the rights to the IP (i.e., the drawings, etc.), and the contractor violated those rights by modifying the drawings and reusing/misusing them without the OP's knowledge or consent.

 

[CWB1]

Of course the OP owns the IP. This is a basic concept in the AEC industry that the creator owns and retains the rights to their work product including drawings, unless agreed upon otherwise

False. Again, in the US:
1.If you're contracted for a specific project then IP ownership defaults to the customer. This has been upheld for everything from traditional engineering projects to software to literature.
2. If you're on a regular long-term/time-based contract then IP ownership defaults to you, however, the customer retains "shop rights" to use/reuse anything developed at no additional cost.
3. You have no IP rights if you violate another's. if your IP uses somebody else's IP, you need a limited waiver of their rights to claim yours. Similarly, you cant claim sole ownership of IP that was codeveloped. Most contract engineers dont work in a bubble, we usually start with another's IP and receive regular feedback/input throughout as our work progresses, so need a detailed contract acknowledging others' IP to retain our own, not general/proforma/copy-paste terms.

With regard to liability in general, you seem to be suggesting subcontractors and subconsultants cannot face liability for damages. That is certainly not true.

I gave several examples where suppliers can be held liable for rework in a previous post - gross negligence and partnerships/JVs. Generally tho, they're only liable for a refund and cannot be forced to pay for the cost of rework/damages. Bc of this, at some point in our careers most of us have had to tell management that we chose a supplier who did lousy work, and that our employer had to eat large rework costs.

 

[dik]

then IP ownership defaults to the customer.

unless modified by contract. This is a common exclusion in engineering contracts.

 

[jhnblgr]

False. Again, in the US:
1.If you're contracted for a specific project then IP ownership defaults to the customer. This has been upheld for everything from traditional engineering projects to software to literature.
2. If you're on a regular long-term/time-based contract then IP ownership defaults to you, however, the customer retains "shop rights" to use/reuse anything developed at no additional cost.
3. You have no IP rights if you violate another's. if your IP uses somebody else's IP, you need a limited waiver of their rights to claim yours. Similarly, you cant claim sole ownership of IP that was codeveloped. Most contract engineers dont work in a bubble, we usually start with another's IP and receive regular feedback/input throughout as our work progresses, so need a detailed contract acknowledging others' IP to retain our own, not general/proforma/copy-paste terms.


I gave several examples where suppliers can be held liable for rework in a previous post - gross negligence and partnerships/JVs. Generally tho, they're only liable for a refund and cannot be forced to pay for the cost of rework/damages. Bc of this, at some point in our careers most of us have had to tell management that we chose a supplier who did lousy work, and that our employer had to eat large rework costs.

Unlike other fields civil engineering and architecture is site specific design and as such each new site needs to be evaluated to ensure the design is adequate. Also the owner does not retain a civil engineer for the mass production so the owner only has permission to use the drawings for a project at a specific location and only once. Where mechanical engineering the client has contracted you to provide a design for a product that is reproduced as needed and often times not stamped.

 

[gte447f]

False. Again, in the US:
1.If you're contracted for a specific project then IP ownership defaults to the customer. This has been upheld for everything from traditional engineering projects to software to literature.

I don't know where you get your ideas, or why you so doggedly insist on them.

The American Institute of Architects (AIA) disagrees with you.

From aia.org:
"Under United States copyright law, and as adopted by most foreign jurisdictions, you are granted the exclusive right to reproduce the documents you create for your clients. If anyone else copies your documents without your permission, you are entitled to certain damages and other protections as set forth in the copyright law."

Not to mention, most architecture and engineering contracts stipulate the same.
From help.aiacontracts.com:
"In B101™–2017, Standard Form of Agreement Between Owner and Architect, the Architect and the Architect’s consultants are deemed the authors and owners of their respective Instruments of Service, and they retain all common law and statutory rights, including copyright."

The state of California also disagrees with you. In the case of Simmons v. Ehm Architecture, Inc., the California Court of Appeals recently held that an owner giving his architect's plans to a design-builder without the architect's consent for the design-builder to complete the project constituted theft.

Is it your contention that nothing was stolen from the OP? That modifying and re-using plans without the engineer's knowledge or consent was OK?

Why won't you answer the above questions?

 

[plausibly_civil]

I'm surprised that there is this much disagreement on this topic. Every civil/structural/architectural firm I've worked for has had a clause in the contract that the firm retains copyright and the project drawings can't be reproduced for other projects. Below is what is in my current contract:
"The Drawings, Specifications and other documents prepared by the Architect and/or Engineer for this Project are instruments of the Architect's and/or Engineer's service for use solely with respect to this Project and, unless otherwise provided, the Architect and/or Engineer shall be deemed the author of these documents and shall retain all common law, statutory, and other reserved rights, including the copyright."

 

[dik]

Every civil/structural/architectural firm I've worked for has had a clause in the contract that the firm retains copyright and the project drawings can't be reproduced for other projects.

Yup...

 

[gte447f]

I'm surprised that there is this much disagreement on this topic. Every civil/structural/architectural firm I've worked for has had a clause in the contract that the firm retains copyright and the project drawings can't be reproduced for other projects.

I don't think there is actually much disagreement on this topic in this thread. There has really only been one persistent poster in this thread that seems to disagree, and notably, they do not appear to work in the AEC industry, so probably aren't familiar with the concept.

 

[CWB1]

I don't know where you get your ideas, or why you so doggedly insist on them.

College, annual training at several of the world's largest companies and federal agencies, and other discussion of court cases and federal law like 17 USC:
Works Made for Hire.-In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
I've also spent most of 20 years managing engineering labor and design contracts, plus the usual stints with legal attacking, defending, and finding ways around IP.

The American Institute of Architects (AIA) disagrees with you.

Architectural plans arent treated the same as engineering prints and models, so nothing you posted is relevant. Architects are in a different profession with slightly different legal concerns. And FWIW, business consultants are notoriously out of touch with industry so relying on their advice/training isnt recommended.

it your contention that nothing was stolen from the OP? That modifying and re-using plans without the engineer's knowledge or consent was OK?

Why won't you answer the above questions?

I did. The OP hasnt posted their IP release so nobody here can offer an educated opinion bc the devil is in the details.

they do not appear to work in the AEC industry

Spare us the gaslighting, a large portion of engineers in other disciplines have designed infrastructure and there's no significant difference in legal/ethical standards, processes, or norms. As shared many times on this site, I've worked on everything from oil&gas sites to data centers and manufacturing plants.

 

[CWB1]

Every civil/structural/architectural firm I've worked for has had a clause in the contract… Below is what is in my current contract:…

Not to nitpick but IP releases/agreements aren’t a contract clause, they’re a separate document covering ownership and use of each side’s existing and forthcoming IP. Employees doing outside projects typically receive 1-2 pages; business-business/govt they become lengthy. Engineering companies need to protect proprietary tools used on the project and use of their name/branding. They may also want to protect their interest in newly developed IP but as mentioned, contract engineers typically avoid needless IP ownership bc there’s usually no payment for the added risk and that’s also a great way of upsetting customers.
What you posted may be a good bluff against a homeowner or small contractor but doesn’t offer protection otherwise, and it leaves you liable. To each their own opinion on effort vs reward but in general you get what you pay for in time/effort/$$$.

 

[jhnblgr]

This question is in regards to civil engineering which unlike many other fields the ownership resides with the engineer unless contract says otherwise. Yes in other engineering fields this is different but that is not the case here. End of story

 

[gte447f]

Works Made for Hire.-In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
I've also spent most of 20 years managing engineering labor and design contracts, plus the usual stints with legal attacking, defending, and finding ways around IP.

You are wrong again. You either do not understand what is a work made for hire, or you are intentionally misusing the term in this specific case to falsely bolster your errant case. Works made for hire are the exception to the rule, they are not the rule. The default rule is always that the copyright belongs to the author of a work. Work made for hire doctrine only applies to works created by an employee for an employer and to a very limited class of specially commissioned works, and in the case of the commissioned works, there must be a written agreement expressly stating that the works are to be considered work made for hire. The problem with your quote above is that you seem to assume that anytime someone pays for something that it becomes a work made for hire, and that is certainly not the case. Have a look at Circular 30 published by the United States Copyright Office. It explains the criteria under which work is considered work made for hire.

Put simply, in the absence of a written agreement declaring them as such, architectural and engineering drawings do not fit the narrow definition of a work made for hire, at least not within the context of a business to business or business to consumer relationship. They do for the employee to employer relationship. In other words, an engineer employed by XYZ Engineering Company does not own the copyright to the engineering drawings he creates, his employer, the company does.