Joint Copyright Clause

[TheBA]

Hi,

My client would like me use the following clauses in my contract.

I'm not sure how 4.1.2 would work in practice and what happens after the 5 years. Has anyone come across similar before?
Also, would I be correct in thinking this doesn't cover anything I produce as a deliverable on my own? In effect, they wouldn't have licence to use it.


4.1 ‘Deliverable’ means a work produced by the Consultancy in the course of Services for delivery to the Client.
4.1.1 Where pre-existing works are with the knowledge and consent of the Client incorporated in any Deliverable, the Client has non-exclusive irrevocable world-wide royalty free licence to use modify and distribute such pre-existing works, after the expiry of the Schedule for a period of five years from the expiry date
4.1.2 Insofar as copyright materials are produced by the Consultancy in collaboration with partners or employees of the Client the copyright and Intellectual Property Rights in relation to such materials shall be jointly held by the Client and the Consultant and each party shall grant to the other an irrevocable license to use the same for the period of the Schedule and thereafter for a further period of five years provided always that by so using the materials the party making use of them shall recognise that copyright is jointly held.

[TheCyclingProgrammer]

The last clause seems odd to me - why wouldn't the client want sole copyright on any original work created for and paid for by them?

Assuming we are talking about code, 4.1.1 should IMO contain something relating to open source software and any licenses covering such, particularly the use of any software covered by less permissive licenses like the GPL.

[TheBA]

It does seem odd but I'm not going to object!
The role is business process/ coaching so I shouldn't need to worry about software

[TheBA]

Anyone else? (I appreciate it's a bank holiday)

[MrMarkyMark]

Anyone else? (I appreciate it's a bank holiday)

Whatever you produce off your own back and your own time is solely yours.

Anything produced whilst engaged by the client, you hold duel rights for 5 years and have to both grant each other licenses to use. I assume after 5 years that it's all yours, unless there are any other clauses to supersede that.

On the surface of it seems like a much better situation than most get.
I.e usually you have no intellectual property rights for any code developed for a client.

[TheBA]

I guess the word collaboration is key. If for example, I create documentation on my own for a training session. Does that fall into the 4.1.1 4.1.2 or neither?

[handyandy]

I think it is catch all and probably more suited to code than documents but principle still holds. The key question is what are they trying to protect themselves against and I think it is that if you bring along some wonderful piece of code (or diagram or process diagram) that you developed on your own or whilst working for a previous customer but that is your IP, then you build it into a deliverable for your current client and hand it over to them, then in a year they decide to publish this product to lots and lots of their own staff or customers - they don;t want you to rock up and claim royalties for each usage of the deliverable.

The reason this type of clause seems to be more prevalent is due to some of the behaviours you see with patent trolls buying up patent or copyright and then pursuing big names (like Apple or Samsung) and saying this tiny piece of code embedded in the middle of iOS is something they have rights to and then asking for royalties for millions of units that have been distributed or that Apple immediately disable the disputed code.

I think the only piece I'd worry too much about is that you have some clause the specifically excludes your liability from any third party that makes a claim that their patent/copyright has been infringed by your client. Like CyclingProgrammer said if you are using stuff that is under GPL you should be ok but you don;t want to be inadvertently exposed in 4 years time due to a patent troll (or if client won;t accept that check your PI insurance covers it which it should)