Ownership of Work Product

[David Kendall]

This morning I signed a services agreement that contains the following language:

Ownership of Documents.
All reports, drawings, specifications, and other work products produced under
this agreement, and any materials or documents purchased by CONTRACTOR, the
cost of which is charged to this Agreement, shall become the property of the CLIENT.

I am trying to reason the importance of retaining ownership of work product. I am including excerpts from CLSA sample contract:

1. Ownership of Work Product. Client acknowledges that all original
papers, documents, maps, surveys, and other work product of Consultant,
and copies thereof, produced by Consultant pursuant to this Agreement,
except documents which are required to be filed with public agencies,
shall remain the property of Consultant. Consultant shall have the
unrestricted right to use any such work product, for any purpose
whatsoever, without the consent of Client. Client further acknowledges
that its right to utilize the Services and work product performed pursuant
to this Agreement will continue only so long as Client is not in default
pursuant to the terms and conditions of this Agreement and Client has
performed all obligations under this Agreement.

2. Use of Work Product. Client agrees not to use or permit any other
person to use final maps, exhibits, legal descriptions, surveys, or other
work product ("Work Product") prepared by Consultant, which Work
Product is not final and which is not signed, and stamped or sealed by
Consultant. Client agrees that Consultant is not responsible for any such
use of non-final Work Product and waives any right to claim liability
against Consultant therefor.
Client further agrees that final Work Product is for the sole use of
Client for the specific purpose described in this Agreement. Such final
Work Product may not be altered or reproduced in any way nor used on
any other project or for any other purposes than as specifically authorized
by Consultant in writing prior to any such use, alteration, or reproduction.

3. Changes in Work Product. In the event the Client agrees to permit
or authorizes changes in the documents prepared by Consultant pursuant
to this Agreement, to which changes Consultant has not previously
consented to in writing, Client acknowledges that such changes and the
effects thereof are not the responsibility of Consultant and Client agrees
that Consultant is automatically released from any and all liability arising
therefrom and further agrees to defend, indemnify and hold harmless
Consultant, its officers, directors, principals, agents and employees from
and against all claims, demands, damages or costs arising therefrom
unless caused by the sole negligence or willful misconduct of Consultant.

4. Copyright. All Work Product identified in this Agreement as within
the scope of Services of Consultant, shall be deemed protected as if such
Work Product was within the protections against third-party use and
disclosure of the general copyright law of the United States as well as
California, including common law and statutory law, whether or not such
Work Product actually is so copyrighted and without regard to whether or
not such copyright law actually applies to such Work Product

CLSA sample Small Project Agreement language:

Surveyor shall be the owner of and entitled to possession of all maps, drawings and other materials prepared pursuant to this agreement.

Everyone I spoke with retains ownership of their work product. In this particular project I was not concerned with giving up ownership of the deliverables (topo cad drawing for design and legal descriptions for easements) but I am wrestling with this decision (especially w/r/t to boundary opinions, field notes and unfiled exhibits) and when I tried to amend the agreement I nearly lost the job. Can someone tell me why this is important? I don't believe I understand fully why I need ownership nor why they want it so it is difficult to negotiate....

[dedkad]

With the economy the way it is and work plentiful, I'm not sure why you would be willing to sign an agreement you weren't comfortable with; particularly one where you agreed to hand over all your work regardless of whether you get paid or not. Retaining ownership of your work is a good selling point if you are trying to solicit work from a neighboring developer or a subsequent buyer of the subject property, since you've already done the legwork in that area.

[bruce hall]

if the client has ownership of all the stuff I provide, then am I able to use these products in the future without the clients consent. maybe, maybe not. sounds like not to me.

I own the product and I will provide copies and originals to the client per our agreement. I provide a service, (not so much a product or labor), although things are produced and labor is expended. These things(maps, reports, docs, etc) are produced in my office that can be touched, used to construct things, and are a benefit to the client for their purposes. That's the service I provide.

The client is purchasing a professional service. products are created because of this service and that's about as far as it goes.

[land butcher]

To damn many lawyers making themselves look valuable and making life miserable for everyone else. $10 says the owner of the company has no idea why that is in his contracts or cares.

I lost jobs because I would not sign contracts without my amendments. It's my license not theirs.

[steffan]

Regarding protection of ownership by copyright, consider what effect the U.S. Supreme Court ruling on Feist Publishing vs Rural Telephone Services Company, Inc. may have. In its ruling on a parallel principle, the justices explained that compilations of fact are not protected under copyright law. Consider whether topographic and feature mapping fall within the definition of compilations of fact.

[Jim Frame]

I run into this now and again, and in my opinion the practical effect is nil. What work product are you planning to reuse? Survey control? How is anyone going to know -- let alone prove -- that you're using numbers that someone else "owns"? A filed map? Your client doesn't own that, the public does. I can't think of a single thing that I produce that I'd want to reuse and couldn't because someone else has a contractual claim to it. In 26 years of signing contracts with clauses like that it's never once come up, let alone become a problem.

[bruce hall]

Working next door to a topo project I did a year ago. I guess I can't use the adjacent topo that I mapped on the adjacent property cause the neighboring client I performed that work for owns that map/data. At least that's what the agreement stated.

I'll guess ill just reshoot it and re map it. Or use the data that the previous owner paid me to gather for him, which he now owns. Sounds ???????

[bruce hall]

Hopefully the topo hasn't changed.

[David Kendall]

Interesting to me that this is the number one thing we claim in our contracts but there is not a clear understanding of why. I appreciate the responses. I probably won’t give up a good contract over this point, I don’t see how the language presented could prevent me from reusing my field data (compilation of facts as Mr Steffan contends) or from retaining ownership of a redacted copy of the original deliverable. Practically speaking, there are no risks.

If someone has a real world example of an instance where subsequent use of intellectual property was actually challenged then I would like to hear about it.

I do like Mr Hall’s ‘I deliver a service’ theory. In this case, ownership of the deliverable is irrelevant. I theoretically own the car wash I just purchased but that doesn’t mean I can stop the seller from washing an identical car (or my car if I were to sell it) tomorrow....

My cursory legal research supports Mr Frame’s argument.

[mpallamary]

I had a situation wherein I provided a topographic survey for a client through his architect. It was a large aerial survey that showed boundary and tide lines over a large area. Several years later, I received a call. The architect had used the survey for another client, without my knowledge or permission. Some questions arose because of discrepancies between the survey and the field conditions. I was being questioned about the accuracy of my work from several years ago. it took a lot of time and it was aggravating.

I fired off a latter to the architect informing him that the survey was my property and he did not have the right to use it. I pointed out that the prior contract was very specific as to what it could be used for and who the client was. I informed him that if he did not withdraw the survey from the work he had done and submitted to the city that I would sue him.

We should maintain as much control as we can over our work product. This is especially true with electronic data.

How many maintain a digital disclosure with their work product such as the following?

***************************************************************************
PALLAMARY AND ASSOCIATES

TERMS OF USE AND RELEASE
DIGITAL/ELECTRONIC FILES, CAD DRAWINGS, AND GIS FILES

BY ACCEPTING ANY AND ALL DIGITAL FILES, ELECTRONIC FILES, CAD DRAWINGS, OR GIS FILES PUBLISHED OR RELEASED BY PALLAMARY AND ASSOCIATES, YOU ARE HEREBY BOUND TO THE FOLLOWING TERMS AND CONDITIONS. UNLESS AN EXPRESS EXCEPTION IS PROVIDED, ANY USE OF THESE FILES IS AT YOUR OWN RISK.

BY ACCEPTING THESE FILES, YOU, AS THE USER, AGREE TO WAIVE ANY CLAIM AGAINST PALLAMARY AND ASSOCIATES AND YOU WILL DEFEND, INDEMNIFY, AND HOLD PALLAMARY AND ASSOCIATES HARMLESS FROM ANY CLAIM OR LIABILITY FOR INJURY OR LOSS ALLEGEDLY ARISING FROM ANY REUSE OF THESE FILES BY YOU, AS THE USER OR ANY OF YOUR AGENTS OR, ANY THIRD PARTY THAT MAY USE THESE FILES.

THE DELIVERY OF ANY ELECTRONIC DATE FILES OR DRAWINGS SHOULD NOT BE CONSTRUED TO PROVIDE AN EXPRESS WARRANTY OR GUARANTEE TO YOU, YOUR AGENTS OR ANY THIRD PARTY THAT ALL DIMENSIONS AND DETAILS ARE EXACT OR TO INDICATE THAT THE USE OF SAID DRAWING IMPLIES THE REVIEW AND APPROVAL BY PALLAMARY AND ASSOCIATES OF ANY FUTURE USE. ANY USE OF SAID INFORMATION IS AT THE SOLE RISK AND LIABILITY OF YOU AS THE USER.

THE RELEASE OF THESE FILES TO YOU DOES NOT AUTHORIZE YOU TO RELEASE OR TRANSFER THESE FILES TO ANY OTHER PARTIES.

THE TRANSFER OF ANY AND ALL DIGITAL FILES AND INFORMATION DOES NOT TRANSFER ANY LICENSE TO USE THE UNDERLYING OR ASSOCIATED SOFTWARE NOR DOES IT EXTINGUISH THE RIGHTS OF PALLAMARY AND ASSOCIATES TO REUSE THE INFORMATION IN THE GENERAL COURSE OF A PROFESSIONAL PRACTICE.

INFORMATION CONTAINED IN THE SIGNED AND SEALED DOCUMENTS IS TO BE DEEMED TO BE CORRECT AND SUPERIOR TO ELECTRONIC INFORMATION.

[LS_8750]

I'm all about maintaining ownership of my work product.

I'm also seeing a more collaborative design and construction environment with Building Information Modeling (BIM), and I am happy to volunteer my point clouds, topo data, whatever supporting data that helps construct the basis of the modeling effort.

In this day and age, it seems to me that the consulting team and construction professionals should be entitled to use that base mapping info, otherwise nobody contributes anything and the model doesn't get built.

But surveyor consultant owns the product. Definitely!

[land butcher]

The wonderful world of litigation. My wife recently received a less than $90 medical device thru a provider chosen by our medical provider. The "receipt" attached listed the full price not our copay on the face of page one. The total receipt was 5 ft long 12 point type on one side and 6 point on the back side, seeing that just made me feel all warm and fuzzy dealing with company that requires that much legalese for a $90 item.

[Anthony Maffia]

It's boiler plate contract language. It is subject to negotiation, but the bigger the client the more likely they'd ignore your pleas and modification requests, e.g. staking contracts are typically take it or leave it.

Ownership does matter when a project goes under - the new developer would "purchase" the plans and draft final map from the old developer / lender, or from the consultants.

[Anthony Maffia]

butcher, Consider yourself properly noticed. Please deliver your first born son to the address on the back of the receipt.

[David Kendall]

Ownership does matter when a project goes under - the new developer would "purchase" the plans and draft final map from the old developer / lender, or from the consultants.

Great point, I’ll put subdivision planning on the short list of when to hold my ground. Thanks