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How do I limit circulation of a document from consulting work?

Seattle, WA |

I created a document for a university, I would like to limit the administration's ability to share this with the state system without my express permission. How can I do this? What language should I include in the document? Thanks!

Does it help me if I put " ©2012 Mycompany, All Rights Reserved | xyz University use only. No distribution rights granted" in the footer of each page?

Attorney Answers 4

Posted

You need a confidentiality agreement, or a non-disclosure agreement, to cover this document and perhaps other items you do not wish disclosed. Copyrights, while in theory protecting your ownership rights, do not necessiarly protect distribution. Any local business attorney will be able to draft you the necessary agreement, and you can use it with other clients as well.

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Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Hmm. "Copyrights, while in theory protecting your ownership rights, do not necessiarly protect distribution." Well, yes, one of the rights in the bundle of rights that comprise a copyright does include the exclusive right to distribute the work. While I agree that an agreement IS the way to limit distribution of the work that agreement will be a copyright license agreement -- NOT a confidentiality or non-disclosure agreement. When characterizing the agreement, a court will look to the intent of the agreement -- which, in this case, will be limit the distribution of the work and will conclude that the purpose of the agreement is "within the subject matter of copyright" and, so, federal copyright law will preempt the state non-disclosure law that could apply [regardless of what title is on the Agreement].

Bruce E. Burdick

Bruce E. Burdick

Posted

17 USC 106 , in pertinent part, states: Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) to reproduce ... (2) to prepare derivative works ... (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; ... Please cite your authority for the proposition that (3) above has been invalidated, as otherwise distribution IS protected by copyright pursuant to Federal law. And, what would be the point of a non-disclosure agreement when disclosure is desired? A distribution agreement (a form of license agreement) is what is needed to set the terms of the distribution to keep it limited. However, just because it is needed by the author does not mean it is needed by, wanted by, or acceptable to the University.

Posted

Placing the footer will definitely help. Ideally, you should have a services agreement with the university outlining your scope of work and payment terms, and also including an intellectual property clause saying that you will remain the owner of copyright in the document, and that the university gets a limited license. If the document is deemed "work for hire", meaning the university paid you to prepare the document and you did not carve out IP rights, then the university may own copyright in your work and you will not be allowed to place the proposed footer.

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Bruce E. Burdick

Bruce E. Burdick

Posted

This misses the point slightly. What is needed is a distribution agreement to set the terms of distribution and limit them in the manner the author desires. Whether the University will agree to it is another question.

Posted

There are several issues here, some complex. First, I assume that you were an independent contractor, not a w2 employee with hours and venue assigned by the university and using their equipment.

Given this, if the work was an instructional text—“prepared for publication and with the purpose of use in systematic instructional activities”—then it belongs to the university. If not then it is probably not one of the specific enumerated cases where an independent contractor’s work is work for hire under section 101 of Title 17, US Code. (The SCOTUS says this list is to be interpreted narrowly and exactly, BTW).

What, then do you do? Next, you look at any writing that created your relationship with the university—or get an attorney to do so—to see if you granted any kind of license to them and, if so, how limited.

Let us say there is only the implicit license to use for their own originally intended purpose. Then we must address the State Sovereignty problem. If this is not a state owned university, no problem. If it is, then big problem. Congress said sate agencies are subject to the Copyright Act. But the SCOTUS later said, yes but you cannot enforce in federal court. So you can put a copyright notice at the foot, assuming they do not already have the documents. But if they blow through that, you are going to be relegated to the state tort claims act in the state where the university is. (I know: I had one of these claims to deal with for a client.)

The short of it is if they do not play fair you will surely need an attorney skilled in copyright law and creative in approach on your side.

Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.

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Philip Leon Marcus

Philip Leon Marcus

Posted

PS. I just noticed you have a "my company. If you have an a LLC or INC that actually did the work then it could not have been a W2 and must have been an independent contractor; so you are or are not under the several enumerated types of creatives listed in section 101.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

I think Attorney Marcus is right in his analysis.

Bruce E. Burdick

Bruce E. Burdick

Posted

I agree. See the following article http://smiplaw.wordpress.com/2011/03/06/11th-circuit-finds-that-university-can-be-subjected-to-injunction-to-prevent-continuing-infringement/

Posted

What you need is a contractual agreement with the University, a "license agreement" that restricts their distribution. You legend actually helps if you get the University to agree it accepts the document subject to your legend. The problem you have is that the Supreme Court has determined that states retain sovereign immunity prevents application of with respect to patent & trademarks (Google "Florida Prepaid v College Saving Bank") and read http://goo.gl/w9M3u reviewing an 11th circuit's discussion of the issue and read the testimony of the head of the Copyright Office on the subject back in 2000 http://goo.gl/bk8rH With the viewpoint of SCOTUS the Congress is currently powerless to impose liability on states for copyright infringement absent state consent. This is one where you need a copyright lawyer, and it needs to be one who knows the law on state sovereign immunity as regards intellectual property infringement. It is a very sophisticated nuanced complex issue so choose wisely.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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