Get a lawyer

That’s really the only advice I can give on models and copyrights.

Nevertheless, here are some examples of contract language that may be illuminating. Bear in mind that I AM NOT A LAWYER AND THIS IS NOT LEGAL ADVICE. I provide no warranty of any kind and assume no liability for your use or misuse of these examples. There are lots of deadly details, regional differences, and variations in opinion about good contract terms. Also, these terms have been slightly adapted to conceal their origins, which may have unintended consequences. Get an IP lawyer to review your plans before proceeding.

Here’s some fairly typical Ventana language that retains copyright to a model, giving the client broad license to use the model but not to resell or disclose it. It also acknowledges prior ownership and privacy of client data:

Data rights and intellectual property

The following terms shall govern data rights and intellectual property rights that arise or result from any work done by Ventana for XXX (hereafter referred to as Work):

All patent, copyright, trade secret, data rights, and other intellectual property rights (a) in any works, inventions, or information that are conceived, authored, or developed by Ventana for XXX or (b) that arise or result in any way from the Work, are and shall continue to be owned by Ventana.

Ventana grants to XXX a paid-up, irrevocable, non-exclusive, world-wide license for the models that are delivered by Ventana to XXX to use, execute, display, modify, enhance, and perform the models for its own purposes within XXX , but without the right to distribute to, disclose to, or use for the purpose of providing a service to other parties not related to this proposal. This license is conveyed for the models in the form of source code for Vensim-language machine executable equations.

XXX data remains the property of XXX and will not be disclosed by Ventana to parties not related to this proposal.

Ventana grants no license for any other purpose or to any other party.

Here’s an alternative that we cooked up in a case where we were a subcontractor, serving a client through a prime vendor. The prime wished have a collaborative relationship, with some intellectual input to the model. We wanted to retain clean ownership and to avoid the hassle of keeping track of who wrote which equation. The client wished to have transparency and broad public access to the model. After much wrangling, we settled on an open source approach, using the Apache 2.0 license. The Apache license is very liberal; it allows subsequent users to produce proprietary derivatives, with few obligations other than attribution and preservation of license notices.

Data Rights and Intellectual Property

“Background Intellectual Property” shall mean any intellectual property rights owned or controlled by Subcontractor hereto developed prior to this Agreement; or outside the auspices of this Agreement with the exception of the Vensim modeling software. Vensim is commercially available and has a free model reader. Subcontractor shall grant to Prime Vendor and Client a license to Background Intellectual Property owned by Subcontractor for the effective period of the contract, as needed for the purposes of satisfying Prime Vendor’s obligations.

Copyright to any works, including computer databases, models, equations, software programs, specifications, drawings, and reports, that are authored or developed by Subcontractor in performance of this Agreement shall be owned by Subcontractor and Subcontractor shall distribute these works to Prime Vendor and Client under the Apache 2.0 open source license. New works not distributed by Subcontractor under the open source license however shall be owned jointly by Client, Prime Vendor and Subcontractor. Each joint owner is free to do what it wants with the joint property without limitation and without consulting the other joint owners.

Notice that non-model items (reports, presentations) that most likely won’t be released under the Apache license are treated differently (joint ownership), because we don’t worry much about ownership of those. Be aware that joint ownership for models could be problematic.

We considered using the GPL instead of Apache. The GPL is a copyleft license, which essentially requires that derivatives of the original work also be licensed under the GPL. I think that’s an interesting option, because it helps to build a body of open/free work, which makes sense, especially for academic research.

Using a common license has an additional benefit, which is that the terms have likely withstood much more scrutiny than anything you can dream up. For models, I like GPL and Apache best among things I’ve reviewed. The Creative Commons licenses are ubiquitous and convenient, though more suited to media than models, I think.

Now, here’s what to avoid – typical grabby work-for-hire language that you will encounter in many companies’ boilerplate:

If patentable discoveries or inventions should result from the work performed by Contractor under this Agreement, all rights accruing from such discoveries or inventions shall be the property of XXX. Contractor agrees that if work under this Agreement involves development of copyrightable products (including computer software programs) then Contractor’s work is considered to be a work-for-hire under U.S. Copyright Law so that all right, title, and interest to such products (as well as the applicable copyrights) is solely owned by XXX.

All data and documents, including drawings and specifications prepared by Contractor pursuant to this Agreement, are instruments of its service in respect to this Agreement and are and shall become the exclusive property of XXX.


Update: Following Les Ormonde’s comment, I dug up a contract referencing know-how (last paragraph) on google. Interesting, though a bit long winded. It explicitly acknowledges the tensions around ownership, which is nice, though I wonder how helpful it would be in court.

5. Intellectual Property

(a) Consultant and HMS understand and acknowledge that Company will be providing access to proprietary and valuable information that Consultant might otherwise not receive. In addition, those parties also understand that should Consultant, in the course of providing Services, invent or participate in inventing modifications or improvements to Company technology, Company reasonably seeks to secure such improvements for its own use and practice. At the same time, Company understands and acknowledges that Consultant has pre-existing and on-going obligations to HMS and the sponsors of research at HMS (including obligations under grants, contracts, collaborative agreements, and a “participation agreement” assigning to HMS all inventions within the scope of certain policies). These obligations include a duty on the part of Consultant to disclose and assign to HMS any inventions or other proprietary rights arising during the course of such employment and any overlapping consulting arrangements (including this Agreement), and an obligation to ensure that any consulting agreement he enters into is not in conflict with the HMS Policy on Inventions and Intellectual Property or in conflict with other HMS commitments, such as Consultant’s obligation to publish research results.

(b) In order to enter into this Agreement with Consultant, Company therefore further acknowledges and agrees that in the event that any conflict should arise between the duties set forth in this Agreement and Consultant’s obligations to HMS or sponsors of research at HMS, Consultant shall necessarily notify HMS immediately, and that Consultant’s obligations to HMS and sponsors of research at HMS shall take precedence over the terms of this Agreement.

(c) However, the parties agree that it is mutually beneficial that Consultant be able to participate fully in providing Services, as stated herein, without being obligated to constrain her or his comments or contributions based upon the complexities of applying these conflicting obligations to intellectual property ownership. Therefore, in order to reconcile these obligations, and promote Consultant’s participation, during the term of this Agreement Consultant shall promptly report and simultaneously disclose to HMS and to the President of Company, or his or her designee, all inventions, improvements, modifications, discoveries, methods and developments, whether patentable or not, made or conceived by Consultant, or by employees or agents of Company under Consultant’s direction, during the performance of this Agreement that result directly from Confidential Information provided by Company pursuant to this Agreement and either embody Company technology or are reduced to practice as a modification or improvement to Company technology (hereby designated “Inventions”). Ownership of such Inventions, and any patent rights related thereto, shall reside with HMS, if covered by applicable HMS policies, or otherwise with Company but subject to a mandatory, cost-free license back to Consultant to use the Invention for academic research purposes. If ownership lies with HMS, then, provided such Inventions are not subject to prior conflicting obligations to sponsors of research at HMS, Company shall have an exclusive option, for 120 days following notice of Consultant’s disclosure, to negotiate an exclusive world-wide license, on reasonable terms customary for HMS, to use, practice, license and sublicense rights under patents claiming such Inventions within a mutually agreed field of use. (While the parties believe that conflicting obligations to research sponsors are unlikely, it is conceivable that in the course of such sponsored research Inventions useful to Company may emerge; rather than forego disclosing such fortuitous inventions to Company, to the extent permitted by such sponsorship and related agreements Consultant and HMS will endeavor to disclose and license such Inventions pursuant to this Agreement.)

(d) The Consultant acknowledges that the Company does not desire to acquire any trade secrets, know-how, confidential information, or other intellectual property that the Consultant may have acquired from or developed for any third party, including the Institution (“Third-Party IP”). The Company agrees that in the course of providing the Services, the Consultant shall not be required to use or disclose any Third-Party IP, including without limitation any intellectual property of (i) any former or current employer, (ii) any person for whom the Consultant has performed or currently performs consulting services, or (iii) any other person to whom the Consultant has a legal obligation regarding the use or disclosure of such intellectual property.

Data rights and intellectual property

The following terms shall govern data rights and intellectual property rights that arise or result from any work done by Ventana for DOE/ORNL, and through DOE for the State Department (hereafter referred to as Work):

All patent, copyright, trade secret, data rights, and other intellectual property rights (a) in any works, inventions, or information that are conceived, authored, or developed by Ventana for DOE/State or (b) that arise or result in any way from the Work, are and shall continue to be owned by Ventana.

Ventana grants to DOE and the State Department a paid-up, irrevocable, non-exclusive, world-wide license for the operational prototype models that are delivered by Ventana to DOE/ORNL to use, execute, display, modify, enhance, and perform the models for its own purposes within DOE and the State Department, but without the right to distribute to, disclose to, or use for the purpose of providing a service to other parties not related to this proposal. This license is conveyed for the models in the form of source code for Vensim-language machine executable equations.

DOE or State Department data remains the property of DOE and/or the State Department and will not be disclosed by Ventana to parties not related to this proposal.

Ventana grants no license for any other purpose or to any other party.

2 thoughts on “Get a lawyer”

  1. I think any consultancy has this problem. Typically it is dealt with by a clause specifying that the consultant retains the right to continue to use their ‘know how’ which is a defined term in the contract. Different types of knowledge can be specified to include all of those things that the consultant might want to reuse in the future. There is also usually a definition of what is not included in the term which typically includes anything specific to the client or the client’s circumstances – their data, their branding etc.

    Generalised model structures resulting from the work done for the client could easily be included as ‘know how’.

    L.O.

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