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...

This isn't it, but it's saying roughly the same thing: https://jordanramis.com/resources/articles/who-owns-the-design/view/

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

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.

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

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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.

Quote (steveh49)

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.

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

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

Quote (glass99)

thanks for the link PhamENG.

Quote (dik)

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.

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.

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

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)
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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.

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.

Quote (steveh49)

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.

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.

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.

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.

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).

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.

Quote:

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.

Quote (CWB1)

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.

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.

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-twice-before-reusi...'s%20plans%20without%20permission.

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

@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.

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

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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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.

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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.