SIGIA-L Mail Archives: RE: SIGIA-L: How common is it for IAs re
RE: SIGIA-L: How common is it for IAs retain rights to the Intelectual Property
From: Tal Herman (therman_at_seralat.com)
Date: Wed Sep 05 2001 - 18:09:44 EDT
In his September 5, 2001, post, Chris Chandler asked:
>
> [W]hat kind of permission do you need to
> include [IA] work in your portfolio (especially an online
> one), or to use the work in a case study for a presentation?
>
This is definitely an interesting question and one that is worth exploring
in greater depth. I will mention at the outset that although I used to
practice law, I do not do so anymore and nothing I say here should be
construed as legal advice. (Also, I specialized in criminal law, so this
was not my field of primary expertise.) In addition, I approach this only
terms of the situation as it appears to me to be in the U.S.
The single most important factor governing the issue of how, when and to
whom work product can be shown is the contractual relationship between the
creator of the work product and the end client.
If no contract is in place and you are a freelancer/contractor hired
directly by the end client, then you likely retain all intellectual property
rights in the work product and can show it whenever, however and to whomever
you please.
If there is a contract in place between you as a freelancer/contractor and
the end client, or between a company that employs you and the end client,
then the question of intellectual property ownership could be defined in
that document. In the absence of "work for hire" and/or rights assignment
clauses in the contract, you as a freelancer/contractor retain all of the
intellectual property rights in the work product. If the company you are
employed by is in this situation, then *the company* retains all of the
intellectual property rights in the work product. Assuming that there
aren't other contractual limitations on when, how and to whom the work
product can be shown (e.g. confidentiality clauses, release date
restrictions, etc.), then either you as a freelancer/contractor or the
company of which you are an employee can do whatever it wants with that
intellectual property.
Having negotiated with many end clients, it is my experience that most
insist on "work for hire" and/or rights assignment provisions in any website
or software services agreement. Under such agreements, I have little doubt
that any written work product deliverables (e.g. persona descriptions,
flowcharts and wireframes) are covered by the work for hire and/or rights
assignment provisions (unless you can be really artful in how you draft
them) and are therefore the property of the client company. Less clear is
the ownership of intermediate work product that does not itself constitute
deliverables.
As a company, we try to avoid the hassle this creates by including in our
standard services contract a clause permitting the company to use any of our
work product for promotional purposes. Occasionally, the exact wording of
this provision is the subject of negotiatioins with the client and we have
sometimes permitted it to be diluted such that our use of the work product
must be approved in writing by the client. Even less frequently, clients
have for one reason or another required us to maintain absolute
confidentiality regarding the nature of the work we have done for them. An
example of this is where we contracted with a large national consulting
company to provide information architecture assistance on a project for one
of the consulting company's clients. Our contract permits us to say that we
did work for that consulting company but prohibits us from revealing the
ultimate client of the project that we worked on. So use of work product as
a promotional or portfolio piece is definitely out of the question there as
revealing that would also reveal the ultimate client's identify.
If you are not a freelancer but an employee of the company hired to produce
the work product, or if your employer is the end client, then the terms of
your employment contract govern the extent to which you can use any IA work
product in your portfolio. As I recall, by statute all work you produce in
the course of your employment is considered work for hire and is owned by
your employer. If your employment contract, however, doesn't expressly
forbid you to use your work product as part of your portfolio, such use may
be okay so as long as no other bar (e.g. trade secrets, patents, company
policy, etc.) exists to your doing so. Neither our services nor our
employment contract deal directly with this situation, although now that I
think about it maybe the employment contract should.
The closest analogy I can think of to this situation is from the world of
advertising. Many graphic designers have in their portfolios work they
produced as part of an ad campaign for a client company. This work is
almost certainly owned by the end client or the ad agency, but I've never
heard any issues raised about showing it to prospective employers in the
absence of concerns other than copyright. My guess would be that so long as
the contract with the end client doesn't expressly prohibit revealing the
work product to third parties on a limited and individual basis, you
probably are okay using it as a personal portfolio piece.
This aspect of the question brings to mind something that happened when I
was an undergraduate at Berkeley. I had heard about a documentary film The
Rolling Stones had commissioned the photographer Robert Frank to make of
their 1972 Exile on Main Street Tour. The film, called "Cocksucker Blues"
after a little ditty Mick sings during the movie, showed the Stones and
their excesses in such a bad light that they refused to allow it to be
released. It was supposed to be over the top. When I was a junior, Frank
had a show at the University Art Museum. As part of the exhibit,
"Cocksucker Blues" was screened. The explanation was that the movie could
be shown as part of Frank's portfolio, but only if he was present (which he
was). I wonder if the same kind of circumstance would apply to an IA
showing a portfolio piece even in the face of client opposition?
The Robert Frank situation would also seem to argue against placing such
materials on your personal website as part of your individual portfolio. In
that instance, you would lose the aspect of personal presence that may be
key to minimizing the impact of the work product's use as a portfolio piece.
Of course, this is only a small taste of the kind of analysis that really
would need to be done to give a more confident answer to the questions Chris
raised. I'll do some searching around and maybe ask some of my friends who
practice Intellectual Property law what they think. If I get a better
answer, I'll post it to the list.
Tal
tal herman||||||||||||||||||||||||||||||||||||
therman-at-seralat.com||http://www.seralat.com
||||||||||||||||||||||||||||||||||||||||||||||
This archive was generated by hypermail 2.1.2
: Sun Nov 23 2003 - 22:54:48 EST
|
