Six steps to protect against copyright infringement claims
In the conclusion of a two-part series on copyright protection, find out how to protect against infringement claims
Once you have a basic understanding of what is protected by copyright, the next question concerns how to minimize the chance of being sued for infringement. There is no silver bullet that will stop all infringement claims from being made; it is an inherent risk associated with being a design professional. As I have repeatedly told clients over the years, anyone with some paper and enough money to cover the small filing fee can sue you.
Of course, the mere filing of a suit does not mean the claim is warranted. While the list of potential safeguards is endless, the following are steps you can easily take to lower the likelihood that you will be defending an infringement claim and provide you with the evidence necessary to properly defend against such claims.
1. Do not copy anything. While it may be obvious, the number one thing you can do in your practice to avoid infringement claims is not to copy any prior work. This simple rule can avoid 99 percent of infringement claims.
2. Avoid non-virgin development. If you are the second or third design professional working on a development, or if your client is the second or third developer on a piece of property, you can be assured that there are disgruntled prior participants who may be inclined to push the boundaries in claiming copyright infringement. You should assume that those prior relationships ended less than amicably. Where there is animosity baked into the project, there is enhanced danger.
Always ask yourself if the narrow profit margins you charge are worth the substantially increased risk.
In addition, designing for a specific site when others have previously done so increases the likelihood that the constraints imposed by the site, the applicable codes, or the permitting and industry practices will increase the potential of overlapping design elements. While these elements are not copied or ultimately copyrightable, they can be used by a disgruntled prior participant to claim infringement. Every infringement suit requires a plaintiff who is ready, willing, and able to take the extraordinary measure of retaining an attorney and filing suit. The easiest thing you can do to avoid this enhanced risk of being accused of infringement by pre-disposed potential plaintiffs is to just avoid such projects. Always ask yourself if the narrow profit margins you charge are worth the substantially increased risk. In short, do not buy other people’s problems.
3. Avoid access to prior design work. If there has been any prior design work done for a piece of property or for the client in general, avoid it like the plague. Do not pull prior plans. Tell your client not to send you anything that was done prior to your involvement. If they try to give you something, politely ask what it is, do not look at it, and refuse to accept it or return it unreviewed with a clear statement as to its status. Limit the information you gather for your work to the greatest extent possible. Document what you saw. You cannot be found to have copied something if you never saw it in the first place.
4. Document right to use. To the extent that you have to review any prior work, you should take the precautionary and extraordinary measure of requiring your client to supply you with documentation of his or her right to use those materials. This may come in the form of prior contracts that give the right to use, communications acknowledging such right, or even formal license agreements. It is difficult for a plaintiff to maintain an infringement claim when there is a document granting permission to use the prior materials. If your client cannot or will not provide you with such documentation, that should raise a big red flag.
5. Negotiate for enhanced warranty and indemnity clauses. To the extent that you need to review any prior work done for a site or project, you should have that information gathered by the client and passed to you. In addition to the documentation for the right to use discussed above, you should negotiate clauses into your agreements with the client that provide enhanced warranties and indemnity. The client should clearly and succinctly warrant that any information provided to the design professional comes with a right to use such materials. This should be partnered with an indemnity clause that requires the client to defend and hold harmless the design professional from any claims of infringement associated with having or using the prior work.
In this digital age, there is no real reason not to thoroughly document your work.
Ensure that the party that makes such promises is actually financially able to fulfill them. A promise of defense and indemnity from a single-asset entity with no money is basically worthless. You may want to designate another entity with the appropriate assets to make those promises, and have them sign as such, or require a personal guarantee from an individual who can meet those obligations.
6. Document your own work. Lastly, you should document your own work. Copyright law recognizes the Independent Creation Doctrine, which is sometimes called a defense but is actually a denial of any copying. In a nutshell, you need to show that you did not copy; in fact, you independently created your own product. To do this, you should be able to “show your work,” just like math teachers requested in school.
You should establish a thorough internal records requirement wherein all of the items that were reviewed, all sketches, all plans and revisions to plans, all meeting notes, and all communications are documented and saved in a logical file system. You and your employees should track their time and briefly describe the tasks and activities performed, even where you are working on a flat fee. Your records should be detailed enough that you can clearly show any third-party that this is how you independently produced your own work product. In this digital age, there is no real reason not to thoroughly document your work.
The best way to avoid an infringement claim is to take steps to minimize the risk and maximize the opportunity for defense if a claim is made. Considering that infringement claims are extremely expensive to defend, this is a situation where prevention is the best available tool.
This article originally appeared in the Practice Management Knowledge Community's Practice Management Digest for December 2016.
David H. Bowser is a design professionals/construction lawyer at Jordan Ramis PC.