"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]

 

[CWB1]

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.

If this is a product and not a structure then I would wager you are more liable by retaining copyright than if you gave it up. In that instance your copyright is meaningless beyond making you a business partner rather than a contractor, it won't stop the customer from making 1M widgets if they want to.

 

[glass99]

it won't stop the customer from making 1M widgets if they want to.

It's a structure in the sense that there are structural engineering calculations involved and its failure would potentially hurt someone. If they make 1M copies they can potentially kill 1M times as many people with it. Its more like a sculpture than a product though, so more like 10 copies not 1M is realistic.

 

[phamENG]

glass - have you reached out to your insurance provider? They can probably help you get through it. If they give you a letter stating that your insurance won't cover it if you sign away your rights to the design they might think twice about demanding it. Of course that may be a bit extreme, but if there is an insurance implication it might help to strengthen your argument.

 

[fel3]

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."

I think your colleague's building plans being reused by the owner for a different site is an ethics violation as well as a legal violation:

http://www.millernash.com/think-twi...1990,an architect's plans without permission.

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"Is it the only lesson of history that mankind is unteachable?"
--Winston S. Churchill

 

[glass99]

@fel3: this was a great link. I have never heard of registering a design with the Copyright Office as a part of normal design practice, though it's super interesting. Also the 1990 decision about the enforcibility of the copyright by design professionals.

 

[fel3]

glass99...

Copyright seems much more important for architects than for civil engineers. This is because many (most?) building designs are not site specific (making the plans easier to reuse), while civil designs are most often very site specific. Building designs are more "area specific" in that different geographic areas have different engineering requirements. For example, a building designed for North Dakota would probably not meet the seismic requirements for California, while a building designed for Hawaii would probably not meet the insulation, glazing, and HVAC requirements for Alaska.

I know architects who copyright their designs for privately funded buildings. I don't know if they can get away with copyrighting government funded buildings. As I recall, the architects I worked with on correctional institutions did not copyright those designs. Their designs started with agency prototype designs, so asserting copyright might have been a tricky proposition anyway. On the other hand, I have no need to copyright a site grading design or a sewer pipeline design because those designs are specific to their sites. While the details might be reusable, the plans, sections, and profiles are not.

Regardless, if a non-engineer or non-architect takes plans prepared for one project and uses them for another, without specific authorization from the design profession, that constitutes practicing without a license.



============
"Is it the only lesson of history that mankind is unteachable?"
--Winston S. Churchill

 

[IRstuff]

unbroken link to article Link

My reading of the case is that it's not about engineering without a license, per se, but purely a contractual violation; the developer signed a contract that required them to get permission from the architect for reuse.

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[Guest090822]

You have to check your state laws. I was involved in an Intellectual Property (IP) dispute. The judge basically threw out the lawsuit because the owner did not notify the engineer that the work they were doing was intellectual property or any type of trade secret. It was stated in black & white in the state laws the requirements for an IP claim to have validity and this clearly didn't fit.

I've seen some pretty nasty firms in my career though going after people though so be careful. There are law firms that specialize in this stuff, never hurts to give them a call.

 

[CWB1]

It's a structure in the sense that there are structural engineering calculations involved and its failure would potentially hurt someone. Its more like a sculpture than a product though, so more like 10 copies not 1M is realistic.

In either case your value lies in an AHJ requiring it to be approved and sealed. Without that your sculpture is just another product which the customer is welcome to copy 1Mx to sell into unregulated jurisdictions and to customers willing to pay their own engineer to have approved - just like home and other building plans. Copyright gives you control of the print's use, not the product so I would tread extremely lightly with the customer. Liability comes from having a vested interest in production, the easiest way to indemnify yourself is by not owning the copyright and having a decent contract.