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IP & Green Building Design
« on: Jun 19th, 2006, 12:16pm »
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I'm an inhouse attorney with no IP experience, and am wondering how to analyze the following:
I represent a green builder/consultant, negotiating a contract to provide services to another larger developer intending to construct a green prototype project.  That larger developer is requesting that we sign an agreement which includes a provision making any works of authorship developed in the course of work to be works made for hire.  My big concern is that my client could provide some innovative green building design ideas, which are standard for our business and which we include in all of our projects...but, by virtue of this agreement, run headfirst into a patent or copyright on technology and design advice we provide to this project.  Make sense or completely unfounded?
If that question's not a valid one here, I apologize but any quick thoughts would be greatly appreciated!  Thanks in advance.
IP Logged
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Re: IP & Green Building Design
« Reply #1 on: Jun 19th, 2006, 12:47pm »
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on Jun 19th, 2006, 12:16pm, GreenBuilder wrote:
Make sense or completely unfounded?

Makes sense.  "Works for hire" is a copyright notion.  The larger developer wants to own any copyrights that come out of your work.  
For the specifics that I'm about to try to address, you might consider getting better answers in the Copyright Forum.
The copyrights would only cover new things created under the contract, not the standard innovative green designs (although "standard" and "innovative" seem to be at odds with one another).  They would not cover anything previously created by your client.  However, proving which is which can be a pain.  And, what about intermediate designs your client creates and then doesn't use in the final design?  It's arguable that the larger developer would own those too.  
Perhaps your client could agree to transfer copyright ownership of the final report to the developer.  That might prevent the underlying creative work from being owned by the developer.  The developer's concern might be that your client will, after the agreement, try to stop the developer from using the reports for whatever purpose, such as advertising and promotion, submission to regulatory bodies, etc.  You can solve that with a full license to use the reports for all those (and perhaps other) purposes.  
What you sometimes see in software contracts is that the contractor fulfilling the contract and then asserting copyright against the other party to prevent the other party from actually using the software created for them -- or to get a copy of the source code for future maintenance.  There are other ways for your client to assure the developer that these are not things to be worried about without giving up all copyright ownership.
For what it's worth, "work for hire" doesn't apply to patents.  But I would look out for similar provisions in the contract pertaining to ownership and obligation to assign inventions, innovations, knowhow, and that sort of thing.  If the developer wants that, the price should be comensurate with what your client is giving up.
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James D. Ivey
Law Offices of James D. Ivey
Bill Richards
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Re: IP & Green Building Design
« Reply #2 on: Jun 19th, 2006, 1:01pm »
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Dear Green,
Unfortunately, there are no quick answers to what you've raised, but I can give you some insight based upon my experience.
It is not unusual for two companies to get together and discuss mutually-beneficial development efforts.  You might want to start with a review of what IP your client has in this area and to what extent it's protected.  Patent applications, issued patents, invention disclosures that are, of course, properly witnessed and dated, trade secrets.  Copyrighted drawings, too.  Will you be disclosing confidential information?  If so, you should be thinking about a comprehensive Confidential Disclosure Agreement (CDA, also sometimes referred to as an NDA (Non-Disclosure Agreement).
In situations like this, it's not unusual to discuss in your agreements what's called "Background IP".  That is, IP that each of you brings to the table that belongs to the "bringing" party.  What happens to improvements to that Background IP?  If something is developed jointly, to whom does it belong?  In the patent world, it belongs to the inventors so obligations to assign should be considered in addition to which company owns the IP.
Your comments regarding works of authorship and work for hire sound more like copyright.  It's possible you'll develop some copyrightable material, but at least as possible, if not more, you'll develop patentable inventions.
Bottom (quick) line, you need to enlist the help of a qualified IP attorney to help you flesh out the facts and provide the kind of protection your client needs.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
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Posts: 3472
Re: IP & Green Building Design
« Reply #3 on: Jun 19th, 2006, 4:39pm »
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The proposed contract provision seems to require that documents which are not even deliverables are to be work for hire.  That sounds completely unworkable to me.   Is the client going to have a copyright in your internal emails discussing the project?  Your meeting minutes?   Is the client going to be have a copyright in your embarassing rough drafts?   Hopefully the real provision is something more reasonable.
The proposed provision would not cover patents.  Works of authorship means copyrighted protectable materials.  Even if a document described an invention, holding the copyright to the document does not make you the owner of the described invention.
If there is no separate clause dealing with patentable subject matter, I suspect that the problem here is that the developer's attorney is not familiar with IP either.
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