Re: Intellectual Property in Network Design

[Owen DeLong <owen () delong com>]

The extent to which this is technically feasible and how one must go about it actually varies greatly from jurisdiction 
to jurisdiction.

Something well worth considering given the number of jurisdictions already mentioned in the current discussion.

There are a number of possible concerns that the customer in question may be attempting to solve with their request. 
The first step is to identify which concern(s) they want to address.

        1.      Do they want to make sure that they have sufficient rights in
                the design that they can replicate/modify/otherwise use it
                without further compensating you?

        2.      Do they want to make sure that you surrender your rights in
                the design so that you are not able to provide an identical
                solution to another customer in the future and/or that you do
                not use their design as an example or case study for your
                marketing purposes?

        3.      Do they not really have a concern, but someone told them
                that it was important to ask this question?

        4.      Do they want to make sure this treated as a “work for hire”
                with all the legal implications that caries?

There are probably others that I am not thinking of at the moment.

Owen

> On Feb 12, 2015, at 08:18 , William Herrin <bill () herrin us> wrote:
>
> On Thu, Feb 12, 2015 at 7:36 AM, Skeeve Stevens
> <skeeve+nanog () eintellegonetworks com> wrote:
> > Actually Bill... I have two (conflicting) perspectives as I said.... but to
> > clarify:
> >
> > 1) A customer asked 'Can you make sure we have the IP for the network
> > design' which I was wondering if it is even technically possible....
>
> Hi Skeeve,
>
> IANAL but I play one when I can get away with it.
>
> This is usually covered as, "Contractor agrees to provide Customer
> with all documents, diagrams, software or other materials produced in
> the course of the contract. Contractor shall upon request assign all
> ownership of such materials to Customer. Contractor shall retain no
> copies of said material following termination of the contract."
>
> So yes, it's technically feasible.
>
>
> > 2) If I design some amazing solutions... am I able to claim IP.
>
> If it's copyrightable (a "solution" may be), then as a contractor (not
> an employee) the copyright vests in you. If the contract states that
> you agree to transfer it to the customer then you breach the contract
> if you don't.
>
> If the contract says the copyrights are theirs then at least that part
> of the contract is probably void. Barring W2 employment copyrights
> nearly always vest in the individual who first put them in to a
> tangible form. There are explicit and narrow exceptions in the law.
> Preface of a book. That sort of thing. It's unlikely you'll run afoul
> of any of them.
>
> Lawyers get this wrong shockingly often. IP doesn't vest in the
> customer and can't be transferred until it exists. The creator is a W2
> employee. The contractor agrees to transfer it following creation.
> Just about everything else is void.
>
> If the contract doesn't say one way or another then the lawyer who
> wrote it was asleep at the wheel.
>
> However... the techniques used to produce the solution usually
> classify as ideas. You may be bound under non-disclosure terms to not
> share ideas produced for the customer within the scope of the
> customer's system but ideas are never property. You can't own them and
> neither can the customer.
>
> Regards,
> Bill Herrin
>
>
>
> -- 
> William Herrin ................ herrin () dirtside com  bill () herrin us
> Owner, Dirtside Systems ......... Web: <http://www.dirtside.com/>