Contractor Stealing My Plans 3

[bigmig]

Found out today that my "friend" who had mysteriously stopped asking us to design his houses for a 2 year period had been deleting the title block, adding the home address, and developing without us. What things can we do to prevent this from happening in the future? Some note on the plans requiring engineer confirmation? A special title block? We used a particular font, which he wasn't smart enough to find. A surveyor contacted us asking for our cad work to stake foundations. He sent us "our" plan set, and we didn't recognize the owner or address.

 

[phamENG]

@jhnblgr , CWB1 works in a different field. In construction, yes - the standard is that the Registered Design Professional retains ownership of the copyright. In product design and development, industry standards are different. OP is a structural engineer working in building design, so in this case the norm would be for the OP to have retained the rights to the design, and their client overreached by using the instrument of service (the plans) for more than the single use license that they were granted. This of course assumes the OP had a good contract in place... @bigmig I don't think you've clarified that one - did you have a good contract in place or was it a handshake deal? That's one of the hazards of making "friends" with clients. It's amazing how quickly those friendships evaporate when you don't "come through" or they see a way to save (or make) a few bucks.

 

[bigmig]

Its entirely possible that your "friend" believes they own the IP and thus are free to do whatever they wish with it. I'd recommend making the phone call to ask, and seeing if there's an amicable solution that doesnt involve expensive attorneys. IME its usually best to give folks benefit of the doubt and not assume either a mistake or malfeasance.

I've been on both sides as contract-engineer and as customer doing everything from writing the SOW to approving the final product. Many of the stateside contracts I've seen didnt even mention IP ownership bc unless the contract details specific IP to be retained, the customer owns everything including the liability.

he signed a contract acknowledging ownership of the drawings is mine. He said he 'didn't read it'.

 

[phamENG]

He said he 'didn't read it'.

Tough luck for him, then.

I've only seen this happen once "in real life." It was resolved before it got to court. While the engineer in question would have happily charged a reuse fee if the client had come to him, he charged him full price for both extra uses after the fact. It was that or go to court where the client would have had to pay a whole lot more to cover legal fees and whatever damage number the lawyer came up with, to say nothing of whatever fines the board would have levied. The client cut him a check the same day.

 

[bigmig]

Tough luck for him, then.

I've only seen this happen once "in real life." It was resolved before it got to court. While the engineer in question would have happily charged a reuse fee if the client had come to him, he charged him full price for both extra uses after the fact. It was that or go to court where the client would have had to pay a whole lot more to cover legal fees and whatever damage number the lawyer came up with, to say nothing of whatever fines the board would have levied. The client cut him a check the same day.

The issue is that by accepting payment, I inherit the job an all risk, which is quite the risk because I didn't inspect anythinng.

 

[gte447f]

The issue is that by accepting payment, I inherit the job an all risk, which is quite the risk because I didn't inspect anythinng.

I wouldn't accept payment for the jobs. I would accept payment as compensation for damages. Would probably need a lawyer to make sure it is "settled" properly.

 

[phamENG]

I would accept payment as compensation for damages.

This.

need a lawyer to make sure it is "settled" properly.

Also this.

If the project specs would have changed based on location or use or the project should have had special inspections but somehow didn't, then you need to take steps to inform the building official of that fact.

 

[bigmig]

This.

Also this.

If the project specs would have changed based on location or use or the project should have had special inspections but somehow didn't, then you need to take steps to inform the building official of that fact.

there are no damages yet, so it would be a hard case to proceed with. The exposed risk I have been put in, which doesn't have a monetary value until I get sued by the home owner, is the item at hand.

 

[phamENG]

which doesn't have a monetary value

I bet your insurer would disagree with you.

 

[fel3]

I wouldn't accept payment for the jobs. I would accept payment as compensation for damages. Would probably need a lawyer to make sure it is "settled" properly.

Including indemnification. The contractor "friend" needs to assume all liability.

 

[RVAmeche]

I mean ultimately it's up to you if you want to sue him for stealing your plans (as he plainly did). You seem very hesitant/reluctant to sue, probably because courts and lawyers are a nightmare, so if you've resolved it to your satisfaction and don't want any money that's your prerogative, but you absolutely have a solid case.

"I didn't read the contract" is a ridiculous excuse and a cop out.

 

[CWB1]

In the US the engineer retains ownership unless otherwise noted.

That's true for those with regular, long-term employment. However, folks contracted/hired/commissioned for a specific project are "hired to invent" and retain no IP rights unless granted by the customer. Our legal system also doesnt recognize IP claims that violate another's rights, and requires specificity for ownership claims. To own IP, the OP needs a signed release detailing specific terms under which any IP/sketches/models/prints the friend/architect provided upfront and IP developed during their contract can be used, not a paragraph or two of vague generality.

Customer could not own the liability since they are not licensed

Licensing is irrelevant. When the customer is a business the contract engineer has no more liability than a regular employee. So long as they're not grossly negligent or going beyond a normal labor contract the business customer holds the liability. Granted, many one-man CE/SE shops do both by forgoing independent design review, work outside their experience, etc, and trying to claim/lease IP so are walking targets for lawsuits.

 

[jhnblgr]

This is a civil engineering case and not mechanical which has entirely different legal protections. And operating under industry exemption is typically not allowed.

 

[CWB1]

IP law doesnt consider industry, nor does it care if you're a professional or member of the public. It gives equal protection to homeowners' sketches and engineers' CAD, and with modern technology there often isnt much difference.

Regarding liability, regulators and courts do give members of the public more benefit of the doubt and often go softer in penalizing. Professionals are treated equal amongst ourselves. Licensing, education, position, nor industry increases liability nor does working under the industrial exemption decrease it. The reason we're able to easily work across every industry is bc the rules dont change.