Intellectual property
Construction Engineering 380
Intellectual Property
• The design or development of a product
and the manifestation of that product are
legally separate. I can own a CD, but not
have rights to the songs on the CD
• Similar logic is used in engineering design.
The design and the building, product or
process that follows from it can be owned
by different people
Intellectual Property
• Intellectual Property is covered under
several categories- most common are
– Patent
– Copyright
– Artistic integrity
– Trade secret
– Trademarks
– Shop rights (employee/employer contract)
Intellectual Property
• Purpose of protecting intellectual property
– Foster technological development
– Promote social and aesthetic good
– Balance rights of artists and inventors with the
commercial good created by free exchange of
ideas and knowledge
Intellectual Property
• Copyrights
– Most intellectual property no longer covered by state
common law (exception is live performances)
– Copyright laws are now statutory (not common) for:
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Literary works
Musical works
Dramatic works
Pantomime and choreography
Pictorial,. Graphic, and sculptural work
Motion pictures and audiovisual work
Sound recordings
Intellectual Property
• Plans, models, and drawings are considered
pictorial, graphic, and sculptural works
• Written specifications are considered literary
• Copyrights last for the life of the creator plus 50
years for self-produced work
• If produced as an employee (for-hire work),
copyright is held by the employer for 75 years
after publication or 100 years after creation,
whichever comes first
Intellectual Property
• Fair use doctrine- permits reproduction for
purposes of “commentary, critique, reporting,
teaching, scholarship or research”- efforts which
serve the public good
• Commercial use is NOT considered fair use,
even if the materials are the same
• Amount and substantiality of the portion used
(one chapter copy rule; 10% use)
• Effect of the use on the market or value of the
copied work
Intellectual Property
• No longer required to register copyrights
• However, if an infringement action is
started, authors cannot recover if the
registration is not completed within three
months (example of submittal to poetry
journal)
• Remedies for infringement- injunction,
impoundment, destruction, actual
damages and profits earned up to $20,000
Intellectual Property
• Design copyrights- stringency depends on
the designer, what is being copied, and
why. Also, must give credit to originator
• Copyrights protect
– Sketches, schematics, design drawings,
software, renderings, models, construction or
manufacturing documents, or (in limited
cases) even the completed project or product
– Example- window mock-up
Intellectual Property
• Waiver of registration requirement makes
copyrighting drawings and designs easier
under the statutory laws
• Common law problems arose when a
determination was made on “dedication to
the public” (going out for bids)
• Architectural Works Copyright Protection
Act of 1990 cleared up a lot of confusion
Intellectual Property
• Can only bring claims under statutory law
• Architects and designers are covered
under artist integrity as well as literary and
graphical protection
• Allows for destruction of the building as
one course of remedy
• Must be used by people (not bridges or
canals) and be “non-utilitarian” (not doors
or hardware)
Intellectual Property
– Can use pictures of the building
– the work can be altered or destroyed without
the designers consent
– public agencies can amend or alter the work
by designation (historical landmark or
preservation) or regulation (zoning, codes)
– If you are an independent contractors, you
hold the rights, but if you are an employee.
Your employer holds the rights
Intellectual Property
• Preemption (federal statutory law gives
copyright to the design firm, but contract
law gives ownership of design to the client
absent specific language to the contrary)
• Preemption is complicated and the issues
have yet to be resolved by the courts or
the professional societies
Intellectual Property
• How to retain copyright
– Follow the statutory requirements
– Do not make assignments to others
– Include contract language specifying
ownership remains with designer
– Comply with notice requirements ©
– Register with copyright office within three
months of publication
Intellectual Property
• Patents- applies to the tangible endproduct (machine, processes, products)
• If you wish to PATENT a design, it is a
much bigger deal than copyrighting a
design
• Can be expensive (over 100,000)
• Will require assistance of a legal team
• Patents must have a higher degree of
creativity and uniqueness
Intellectual Property
• It is relatively easy to get around patents
by attacking the validity of the patent or
making minor design changes to avoid
claims of imitation
• Patent infringement suits are long and
expensive and are seldom won (only 18%
at Supreme Court level)
• Patents last 17 years
Intellectual Property
• Because patents are hard to enforce,
many companies use trade secrets
instead of patent registration
• Trade secret- a process, device, or
knowledge that gives your company an
advantage over others who do not know
how to make or use the process, device or
knowledge
Intellectual Property
• Chemical formulae for industrial processes are
probably the best example
– Extent to which information is known outside the
business
– Extent to which it is known by employees and others
in the business
– Extent of measures taken to protect the information
– Value of the information to competitors
– Amount of money and/or effort spent developing the
information
– Ease or difficulty with which the information could be
acquired or duplicated
Intellectual Property
• Usually becomes as issue when an employee
leaves and goes to work for themselves or a
competitor in the same industry
• Usually must sign a non-disclosure agreement
and sometimes a non-compete clause at
termination
• Trade secret litigation comes when a company
believes one of its former employees has given
trade secrets tot heir new employer
Intellectual Property
• patent protection requires disclosure, trade
secret does not
• Trade secret need not achieve the level of
creativity and uniqueness required for a
patent
• Trade secret laws are usually nonstatutory and governed by state systems
Intellectual Property
• Tradeoff of public good and private vice
(Adam Smith)