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Joy Nicholas
Joy Nicholas, Lawyer
Category: Law
Satisfied Customers: 2679
Experience:  Lawyer
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My company produce heavily customised research reports for

Customer Question

My company produce heavily customised research reports for clients in the US where typically we allow that these are "works for hire" subject to retaining the rights over the information included in the reports to reuse in different reports/circumstances for other clients. Recently we have introduced a new range of limited scope standard reports where clients can change various parameters of the research and so the amount of customisation is very limited. Would it be reasonable for these type of reports to simply retain all copyright and refuse any "works for hire" clauses that may be proposed by the clients?
Submitted: 20 days ago.
Category: Law
Expert:  Ed Turner replied 20 days ago.

Hello. I am Ed, a Solicitor qualified in England and Wales with over a decade’s experience in the legal profession advising clients.

I specialise in Commercial Contracts, Business Transactions, Employment, Dispute Resolution, Personal Injury and Road Traffic Law and shall be reviewing your legal problem today.

I shall be delighted to talk with you by phone to discuss your issue in greater detail if you accept the site’s automatic offer of a Premium Service Phone Call.

Expert:  Ed Turner replied 20 days ago.

This sounds like a very interesting business opportunity.     I am delighted that you have had the foresight to seek legal advice from a solicitor and am hopeful that I can advise you further on the necessary legal steps to realise your commercial aims in this matter.

Expert:  Ed Turner replied 20 days ago.

Can you upload a draft of the contract for me to consider what amendments may be required?

Customer: replied 20 days ago.
This is a fairly typical clause from a client contract that we would have to propose amendments to: *****: Unless otherwise agreed in writing, any Intellectual Property developed, created, or otherwise acquired by Supplier during the performance of the Services shall be considered a "work for hire" and as such shall be the sole and exclusive property of XXX. Supplier hereby assigns to XXX Supplier’s entire right, title and interest in and to all discoveries and improvements, patentable or otherwise, trade secrets and ideas, writings and copyrightable material, which may be conceived by Supplier or its subcontractors or developed or acquired by Supplier or its subcontractors during the term of this Agreement, which may pertain directly or indirectly to the business of XXX or any of its Affiliates and subsidiaries (collectively “Work Product”). Supplier agrees to disclose fully all such developments to XXX upon its request, which disclosure shall be made in writing promptly following any such request. Supplier shall, upon XXX's request, execute, acknowledge and deliver to XXX all instruments and do all other acts which are necessary or desirable to enable XXX or any of its subsidiaries or Affiliates to file and prosecute applications for, and to acquire, maintain and enforce, all patents, trademarks and copyrights in all countries with respect to such Work Product. Without in any manner limiting or negating its exclusive ownership of all such Work Product, XXX shall have a worldwide, royalty-free, transferable, sublicensable, irrevocable, perpetual license to use or incorporate into the Services any suggestions, enhancement requests, recommendations or other feedback provided by Supplier or a subcontractor relating to the operation of the Services.
Customer: replied 20 days ago.
for our existing offerings we would seek to amend this clause by mainly accepting it but by seeking to retain rights to the information in the report. Now for the new limited customisation reports we would like to go a step further and simoply establish that these are not to be regarded as works made for hire. Of course for some clients we may have a mixture!
Expert:  Ed Turner replied 20 days ago.

You really need a solicitor expert in commercial contracts and intellectual property rights (IPR) to draft you bespoke agreements depending each deal with your client so it is clear who owns the IPRs.    This is not a matter that a legal adviser can assist you on this platform.

Customer: replied 20 days ago.
I was not really asking that in my original question. You asked for something. Probably if you are not an expert in IPR then it might be better for someone else?
Expert:  Ed Turner replied 20 days ago.

Yes, I am an expert in IPR and Contracts, but I cannot provide that kind of bespoke drafting service on Just Answer for "loose change".   You must instruct a solicitor at further cost.

Customer: replied 20 days ago.
OK so my original question was: . Would it be reasonable for these type of reports to simply retain all copyright and refuse any "works for hire" clauses that may be proposed by the clients? I have simply shown you an example. Let me reframe the question. If we provide a limited scope research report for a client, what reasons would they have for refusing to relinquish their works for hire clause?
Expert:  Ed Turner replied 20 days ago.

This is a question of your commercial relationship between you and your clients and is not something that a solicitor can advise upon directly.

The clients may insist on retaining the WFH Clauses and go elsewhere to another provider if they feel that this point is a "deal breaker".

Customer: replied 20 days ago.
No, I am asking this as a more general question. If we provide a completely non-customised report then we retain all copyright. If we provide a heavily customised report that would have more of the clients IPR built in then we allow them the copyright, but these new reports seem to be somewhere in the middle and I am asking for some general advice. However by all means please relist the question in case someone else will pick it up. Thanks.
Expert:  Ed Turner replied 20 days ago.

I note all you say, but I do not think that this is a matter with which a solicitor can assist you and certainly not via an “ad hoc” answering service like Just Answer.

I suggest that you instruct a solicitor under a formal solicitor-client retainer at additional cost.

However, I will “Opt Out” of this thread and allow another Legal Expert the opportunity to assist you.

Kind regards

LawyerEd

Expert:  Joy Nicholas replied 18 days ago.
Hi, thank you for your message. Do you still need help with this question?
Customer: replied 18 days ago.
please
Expert:  Joy Nicholas replied 18 days ago.
Hi, in terms of the terms of the contract you are free to negotiate the terms with your clients. If you wish to retain copyright and refuse wfh it is ultimately your decision. However the client may chose to go elsewhere. I would strongly advise that you instruct a solicitor in your area to examine your full circumstances and draft a legally binding contract accordingly. I hope this helps. Best wishes