Who owns the designs? The Engineering Firm or the Client?

Who owns the designs?  The Engineering Firm or the Client?

Intellectual property law in Alberta can get complicated when it comes to the designs of a project completed by an engineering firm for a client.  When it comes to ownership of the intellectual property, ownership will be assigned from the agreement. 

The ownership of drawings and related documents refers to the ownership of the drawings themselves, and is governed by the contract between the architect or engineer and the client. The ownership of copyright, on the other hand, refers to the ownership of the expression of the idea embodied in the drawings and the right to reproduce that expression. Architects or engineers who create the copyright work retain copyright in the work unless they expressly assign it to another.  It is important to look at the language of the contract, which can be an employee agreement or a master service agreement.

Typical language in a master service agreement between an engineering firm and the client:
“…will exclusively own any and all information generated from the performance of services under this Agreement including, but not limited to, confidential information, notes, documentation, reports, programs, software, systems, methods, products, analyses, professional opinions and conclusions, inventions or improvements.”

“…assigns all rights, title and interest it may have or may acquire in the proprietary Information, unconditionally, perpetually and throughout the world, to (the Client) and will not challenge (the Client)’s claims to ownership of the proprietary information.”

Both of these clauses assign the ownership of the copyright of the designs of the project to the client.  If the original contract assigns ownership of the information or all rights and interest to the Client, then the Client has the right to use the information or sell it to a third party.

In an employee and employer situation, the ownership of the designs would depend on the employment agreement.  Here is an example of a typical clause in an employment agreement:

“Employee agrees and hereby acknowledges that all rights in any work are assigned and belong to Company. The Employee specifically acknowledges and agrees that all right, title and interest in and to the product of all work, including copyright of computer software and related work, is assigned to Company.”

“All drawings, flow diagrams, sketches, specifications, computer programs and printouts, native computer data and other records, regardless of form, prepared by Employee under the provisions of this Agreement, shall be the property of Company and may be used by Company for any purpose.”

In both of these clauses ownership of the intellectual property belongs to the Company.  If a person wants to retain ownership of their intellectual property it is important to negotiate with the employer and specifically state that ownership remains with the employee and not the company.

If you are uncertain on whether you own the rights to the intellectual property even after reviewing the original contract, it is recommended to speak with a lawyer to know your rights.

Marty Birky is 2018 joint JD/MBA candidate at the University of Calgary. Marty is working at  the BLG Business Venture Clinic for the 2017/2018 year.