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Copyrighting design work?

Larchinect

We are a small landscape architecture firm, just over two years old now. We often take on a sub consulting role doing design and documentation work for other firms, including other landscape architects. We have only signed contracts a few times in the pas couple years.

One engineering firm in particular likes to present us lengthy contracts with all kinds of language about copyrights, payment, insurance..lots of standard stuff as far as I can tell.

long story short, we needed work and they presented us with a contract to provide landscape architecture and design services for a large capital improvements project for a local town. From what I can tell, they have an on call contract for engineering with the town though they do employ la's. 

in reading the contract there was some language about sharing our work. We asked about it before signing, there was a verbal agreement of sorts that we could 'probably' share our design work (in our portfolio, website, etc) after an agreed date.

also in the contract was specific dates for invoicing and getting paid..in a nutshell we have invoiced on time, it's been well beyond the two week time period to receive payment. We are actually on our second round of invoicing and they are now more than 30 days overdue on the first invoice.

additionally, we just finalized a very nice sad package including assembling all of our drawings onto boards with tabs and logos, etc. we were asked to remove our logo and replace with theirs...now we just feel like we are getting slapped on the face. I asked about sharing again...they'll get back to us..

so now we have an engineering firm taking full credit for our very good work, and we haven't even gotten paid yet.

my question is, how air tight are these types of contracts typically with regard to copyright of another firms creative work? Is there a way to show the work in our marketing without technically breaching the contract or getting ourselves in hot water from a legal standpoint? 

Im getting a very sour taste in my mouth with all that has transpired and not sure if we just got bent over backwards for the first time and I should just chalk it up to learning, or what?

 
Oct 24, 14 10:37 pm
midlander

eh, what does that 'language' actually say? It's totally possible you signed an agreement that gives them full license to the copyright, which would let them use the design however they want. Usually our firm's contracts are quite specific that we keep the copyright and only license the client to use it for that project.

It sounds like they were being reasonable about letting you use the design for your own portfolio - get it in writing! Again on our projects a limit on public release of material before the project has been publicized is pretty common.

Keep pushing on the payment. Don't think they will do you any favors if you let the billings slide. Ask them whats holding it up; if the city hasn't paid yet you're going to have to wait too.

For the future be clear in the contract: negotiate something reasonable regarding ownership of the copyright, license to use in your portfolio, and whether the client is required to attribute the work to your firm.

Oct 25, 14 8:37 am  · 
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gwharton

I've received contracts with copyright transfer clauses in them before. I just cross that part out and initial the change, and rarely get any blowback for doing so. I think it's mostly just a thing lawyers throw in to see if we're reading the agreements before we sign them. If a client insists on having the copyright at that point, then I tell them there are three options: 1) They can buy it at full price, which is 10x gross fee with a 50% cash payment in advance, 2) They can make me an equity partner in the project for a minimum 10% stake, or, 3) They can find another architect.

It helps, when having that conversation, that my wife is in the movie business and I know in detail how actual copyright transfer agreements work in the entertainment industry. Over there, it's cash, points, or GTFO.

Oct 25, 14 11:48 am  · 
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Larchinect

We definitely signed a 'work for hire' agreement. This means the art belongs to them. When you're a small shop, hungry for work it's easy to miss the fine print. It's also critically important to continue building your professional portfolio.

what I'm wondering now is if there is any recourse on our end or if the contract is enforceable, to what degree? Is there a workaround for sharing work without explicitly violating 'work for hire' terms?

This is a situation where it's easy to come to a general conclusion--yes, we should have read the contract more closely and requested some provision for sharing work, but we didn't.

Those that have been in this very specific situation will understand. The term 'work for hire' has very specific meaning, but it seems still leaves lots of leeway for maintaining intellectual property rights.

Oct 25, 14 11:52 am  · 
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Larchinect

Thanks gw, that is very helpful.

what makes this situation perhaps a bit different from your experience is that the client is another consultant. 

Your points still stand, however. 

Oct 25, 14 11:56 am  · 
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bowling_ball

gwharton, any resources you or your wife would care to point to in helping navigate this stuff? I'm setting up a meeting with a lawyer soon, but knowing what questions to ask would be super helpful.

Oct 25, 14 11:57 am  · 
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gwharton

If you signed an agreement transferring copyright, you are shit out of luck unless you can find grounds for invalidating the contract entirely (not impossible, but difficult unless there's something obviously wrong with its construction or terms).

In the meantime, suck it up, perform as agreed (to the specific letter of the agreement and no more if you want to be pedantic about it), and don't make that mistake again.

Oct 25, 14 11:58 am  · 
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gwharton

Larchinect: A client is a client, whether developer, consultant, or whomever. They are hiring you to provide something or do something under the terms of an agreement. Why or who are not relevant to that.

bowling_ball: A lawyer can tell you much more about the ins and outs of this stuff. Without getting a law degree yourself, you're pretty much dependent on experience and the advice of experts in order to navigate it. And there are lots of realities which never make it into books and have to be learned the hard way. For instance: even an iron-clad contract is worthless if you wind up in a dispute with a party who has way more resources than you do.

People who negotiate agreements for a living know all kinds of gotchas to watch out for or even include. Entertainment industry people are notorious for this, regularly offering contracts which are only technically short of extortionate and chock full of a lawyer's wish list of chump clauses to snare the gullible and uninformed. In architecture, this is a major reason why the AIA originally created the standard contracts: to remove the incentive and damp down the practice of this kind of rampant legal arms race. However, the AIA contracts are a little too narrow and a little too favorable to architects for the more sophisticated clients to entirely trust them. So now it's very common to see clients having their lawyers draw up custom agreements in lieu of AIA docs.

As a professional in a smaller practice, you really only have three kinds of responses to that:

  1. Lawyer up and negotiate every term in the thing the hard way, This will be expensive. Your fees should increase in response, not least of which because of the legal costs, but also because you are accepting a much higher level of risk. Risk should NEVER be transferred without proportional renumeration. That is a fundamental principle of business, and most of our clients live by it. Don't assume it doesn't apply to you too.
  2. Insist that the agreement be AIA docs or GTFO. If they want specific issues addressed outside that contractual framework, that's what Article 12 is for.
  3. Walk away
Oct 25, 14 12:16 pm  · 
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Carrera

The AIA I think has rules on credit for work. If you’re a partner and jump ship you are permitted to use the work you did in marketing even though they own the copyright. But neither of you guys are in the AIA. When you’re growing you have to do whatever it takes to keep the doors open and that’s all this is. Just perform and cash the check, if it ever comes.

Oct 25, 14 12:20 pm  · 
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Jaffe's First Law: The value of a service is inversely proportional to its degree of completion.

Jaffe's Second Law: If you need a lawyer, it's already too late.

Oct 25, 14 12:30 pm  · 
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awaiting_deletion

Larchinect, I think gwharton pointed out the biggest issue regardless of contracts etc...RESOURCES...If the other party has it and you do not, even if you are correct by the letter of the law, fighting it would be a waste of time and may actually hurt business. So as Carrera says cash the check and move on. You can def network the facts by word of mouth, but be careful........I will give you a personal example. I have this client for years, refuses contracts, often pays very late, and his name makes my wife cringe every time I mention the thousands owed, but as a developer/contractor/realtor who acts as in investing agency in a very high end market he makes a lot of very wealthy people wealthier. Me talking shit, getting pissy, or sueing is useless because all he has yo do if I am up for job with another person in his industry he van say whatever he wants and shut me down. An old boss of mine always said do not sue for the money unless last resort, since the word on the street will spread quickly and people will think twice about hiring you. I agree with Miles here, its too late. Let it be and move on.

Oct 25, 14 12:57 pm  · 
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Larchinect

Lesson learned.

We have asked for clarification on a date after which we may be permitted to share the work in our marketing materials. We discussed this in the beginning, but never closed the loop, so I'm not sure what they will say. Based on the above comments, I am not counting on getting permission.

The next question I expect to hear from the client is, "can we have your working files?' We have already shared cad files (sd level site plans), but our psd's contain what I would consider proprietary techniques and valuable intellectual property. I wouldn't be surprised if they claimed a right to these files in the contract as well. 

pretty disingenuous business if you ask me, but who's asking anyhow..

Oct 25, 14 12:59 pm  · 
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Larchinect

I agree Olaf..

funny, there is a section in the contract stating something to effect of 'don't go around telling everyone you did the work or we'll sue you..'

I get it-- lesson learned, move on.

Perhaps the most important lesson for me is that I need to be a better business person, can no longer rely on our creative talent and our clients good will. 

Oct 25, 14 1:05 pm  · 
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Carrera

Problem with being an LA is that one doesn’t need a permit to build most of your stuff, not a lot of regulation to box people in. It’s a tough path as a business. Need to stay loose and flexible because you’re gonna get beat up. I wouldn’t get all smart on these guys or in the future – The business plan is this – Get the work + Do the work + Get paid. Get smart on those three things and forget the rest, as an LA.

Oct 25, 14 1:27 pm  · 
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gwharton

Unless the working files are specifically and explicitly noted as transferrable under your agreement, I would not hand them over. They are your process, and not the final product which they are paying for. They get the end result, but the means you used to create them are yours unless you were an actual employee. You can put them off indefinitely without directly refusing if it comes to that.

Oct 25, 14 1:44 pm  · 
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awaiting_deletion

i agree with gwharton, and there is nothing wrong with you submitting them without all the tricks you, etc.. flatten them....

Oct 25, 14 3:11 pm  · 
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Larchinect

Yup, my thoughts exactly..thanks for all the input.

Oct 25, 14 3:24 pm  · 
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