I am working on a contract requirement for multimedia presentations for a training class the agency conducts for its agents. What data rights clauses (-17 Special Works?) should be included? If the contractor develops totally at Government expense, the Government onws all rights to the data, right? The contractor needs to have developed something at his expense to claim that any of the data is proprietary or am I over simplifying the issue. What clauses would you include in the solicitation and subsequent award? Any help you can provide would be greatly appreciated. Thanks

By AnonII on Wednesday, October 24, 2001 - 11:24 am:

You are oversimplifying. Get professional help. By that I mean legal help from someone specializing in the complex field of intellectual property. At the very least, a poor second best, study this issue very carefully yourself.

More than one agency has run into trouble assuming "I paid, its mine" in this area. Maybe, maybe not. Many have assumed they can assert software was a "work-for-hire" and find this isn't exactly the case. You can protect yourself, but there are trade offs you must consider.

One is whether you are going to pay for the reinvention of the wheel -- I mean really reinvent it through original R&D too. Now, just how and why would you do that? A carefully crafted requirement with expert help is the only way to enter these shark infested waters.

By Brad Franklin on Wednesday, October 24, 2001 - 11:27 am:

Generally speaking, the Contractor "owns" all technical data he develops notwithstanding the funding source. The funding source does, however, help to determine the "rights" the Government has to use such data. DFARS 252.227=7013 is a good starting point for your research.

Brad

By AnonII on Wednesday, October 24, 2001 - 11:41 am:

It occured to me you might think "this is a presentation, not software." It isn't hardware (generally patent law) so it is software (generally copyright law). An off the top example (I'm not going to research all the possibilities here) might help explain a type of risk.

Your contractor is preparing a slick presentation and instead of clip art negotiates with an image owner to use their property in this contractor prepared presentation. They neglect, indeed are not required, to get rights for uses beyond the required delivery copies. Your agency decides to make thousands and put them on the web as well. Bang! You are hit with unauthorized use of the image by the image's property owner.

You thought you bought unlimited rights to the contractor's delivery. You failed to make sure they did the same with respect to a third party's property. Your wonderful presentation is now highly limited.

By-the-way, some owners are extremely aggressive about protection of trademarks and such. NFL is one example. Print a bunch of caps resembling an NFL team's logo and you are in for real fun. Some even make printers account for every copy, including misprints that must be destroyed.

By Anonymous on Thursday, October 25, 2001 - 09:20 am:

Anon II,

We basically give them the data to put in the presentation - but one thing I don't know is if we tell them about what graphics to use.

Although not related to the issue I am taking a business law course and I think our instructor/ professor would not agree with the NFL situation without more specific info. It would be situational, it depends on the actual use of the NFL logo use as to whether it is a copyright violation. At least this is what the instructor (attorney) said.

One thing I would ask, if we buy the graphics software that provides the animation and/or pictures - we should be able to use this. And I think we should be able to use "free" clipart that is available from the Web without heartburn.

I actually think this is a multimedia training product using information furnished by the agency to put the training media together. Aside from that, I believe the primary fucntion will be for the contractor to provide the training to our staff. Development of the training media is - handouts, CDs, software based and video based.

By AnonII on Thursday, October 25, 2001 - 04:24 pm:

Your instructor may be thinking of the "fair use" exception to copyright liability. That might or might not apply to your situation. Teaching and research are generally considered "fair use" defense. Using someone's property in widely published teaching materials is not likely to be considered fair use. A teacher might extract and make 30 copies of several copyrighted paragraphs to be used in a literary comprehension exercise under fair use. The same teacher making 30 copies of a workbook to avoid buying is infringing.

Sports organizations are some of the most aggressive defenders of relatively small things here. One putting a little team helmet on a commercial publication or web site will likely to get interesting mail quickly. It is a major revenue source and they are aggressive about its protection.

That is all background here. It provides perhaps a sense of the issue. In your case you have a fairly simple out. Place a solid requirement upon your contractor that they deal with this issue in their performance. Brad Franklin's message is correct. Funding source is not conclusive. The fact you provide factual basic materials may not be that much of a factor either. You are contracting for someone to create something else from those basic materials and they may obtain ownership rights in the created product. However; your requirements can be conclusive.

There is a cost and maintenance issue you should address. Do you really want to pay for ownership? Do you want to own something frozen in place by that ownership (An issue more important in computer software than here)?

Depending on your answer to such questions you can specify the conditions of delivery of direct contractor owned intellectual property and set the terms under which third party property will be included. You could, for example, require their property be delivered with a specific government reproduction and use license and that any third party material shall be delivered with a conforming license. Again there are tradeoffs. With your list of things delivered to include handouts, CDs, software and video, you had better be sure of the rights you will get now and not later.

You need a specialist in intellectual property more than ever when I see you are now involving such issues as "if we buy the graphics software." First, you haven't bought graphics software. You have paid for a license to use a copy within the terms of the license. That will probably be anything except some sort of free use. You certainly are not likely to be able to make copies of that software! As for the "'free' clipart that is available from the Web" I hope you are not holding that erroneous and all too common idea that one can just copy stuff off the web.

One final option you might consider. Your contractor is apparently responsible for both these materials and the actual training. Training and the materials, depending on the subject, may be a short life span item. Maybe your agency does not need to "own" any of this. Place the whole burden, including clearing property rights, on the contractor for the life cycle of the training. I've seen many government training course materials addressed to a specific agency where copyright is with the training entity. What you want is the training, the freedom for your people to leave and retain certain materials and perhaps unlimited use of others (CDs for example). Those are requirements issues.

By Anonymous on Monday, October 29, 2001 - 08:25 am:

Thanks AnonII,

A lot of helpful information. The insight will be quite helpful in negotiating a final contract. The contractor we are dealing with is very difficult to work with and is not very cooperative. I have attempted to get him to "assert his rights" but have had no success. I have also consulted with Legal Counsel. The opinion is "continue as we are proceeding". We have a Statement in the "solicitation" that asserts all data is the property of the Government. But we also have the clause in the solicitation for "Special Works". I find the two to be in conflict. If we "own" the data, then the clause should not be in the solicitation. (My opinion). I was hoping this would be resolved by the contractor asserting his rights and telling us what part of it we need a license for our use. As far as wide dissemination, we will limit reproduction to about 650 people (I think) per year.

As far as your statement on "fair use", you are right in what the instructor said, but he didn't put a limit on the reproduction quantities. He didn't want to take the discussion much further, because he had come to the conclusion that there would be very little opportunity for us to ever need any more detail than he had given. I think I am the only one in the class had more insterest.

Thanks for your insight.

By AnonII on Monday, October 29, 2001 - 11:26 am:

I'm surprised your instructor did not connect "fair use" with quantity. It can be crucial. There is something of an inverse relationship between quantity and a fair use defense. It is a good defense for that single full article you copy and retain for education or research purposes. Make ten and pass them out and exposure is increased. Make hundreds for distribution and one can expect trouble.

There is a good discussion on educational use on Wellesley College's Copyright Policy FAQ page. That page has a link to another with several additional links. The one at Stanford, Copyright and Fair Use may be of particular interest (note the "Fair Use Copyright Reminder" from the now rather visible Provost, Condoleezza Rice). I doubt a simple "fair use" claim would cover 650 copies without special circumstances.

My comfort level with simply an assertion in the solicitation as you have described is not particularly high. The "special works" clause may not actually conflict. It all depends on exact wording and context. My comfort level would increase if there were a clear "shall" requirement imposing upon the contractor to deliver full ownership of the entire work without copyright conditions. That could be expensive, impractical or both. A good alternative is a solid "shall" requirement to deliver a suitable license for all materials within the scope of your agency's intended use and within the cost of the contract. The requirement must cover any third party material the contractor uses. It is unlikely they plan to do a completely original work.

Unless you legal advisor has special experience in intellectual property you might seek further assessment by a legal specialist with access to exact wording. Part of my interest in the subject comes from contract messes. At least one was cleared by legal. Only later did we find intellectual property was "not my field." Neither is it mine. What is that saying "Burned once . . ."?

By Vern Edwards on Monday, October 29, 2001 - 03:36 pm:

Anonymous of Oct 24 at 8:01am:

Do you work for a DOD or civilian agency? The rules are different for the two groups.

By Anonymous on Tuesday, October 30, 2001 - 07:46 am:

Vern,

I work for a civilian agency now but have worked for the Army and the Navy. My last assignment with the Navy was with research and development efforts (1999-2000)for one of the major systems commands. I was becoming intimately familiar with data rights "rules" within DOD working with the patent attorney and trying to award a contract with an educational facility. Just by accident, I ran across a disucssion about the differences on how DOD handles data rights versus the civilian agencies on the Internet somewhere. I didn't need the information then, but could sure use it now. I even posted a query at this website to see if anyone knew of the website where the discussions might be available without much success. Usually, I bookmark these websites so they are available when I need them

By Vern Edwards on Tuesday, October 30, 2001 - 09:51 am:

Anonymous:

Okay, let's proceed systematically--

First, you say that the contractor will develop a "multimedia presentation" of a course the agency conducts for its agents. Does the contract require the contractor to develop the course content and then deliver it in multimedia presentation format, or does it merely require the contractor to put government-furnished course content into multimedia format? In other words, is the contractor developing the course content data or merely formatting it?

Next, when you say "multimedia presentation," are you talking about computer media? If so, do you want the contractor to provide you with only the end-product media such as CD-ROMs and user instructions, or do you also want the underlying computer program documentation, i.e., the code? If you're not talking about computer media, what kind of multimedia presentation do you mean?

Finally, have you read FAR Subpart 27.4, Rights in Data and Copyrights, and, if so, do you feel that you understand what it says? If not, please read it before we go any further. You will find the coverage a little different than DOD's.

Vern

By AnonII on Friday, November 02, 2001 - 10:37 am:

Anonymous has not, probably cannot, give exact details of required data deliverables sufficient to designate clauses. The original post's mention of multimedia training presentations could cover nearly the full range of copyright issues mentioned in FAR Subpart 27.4 (Rights in Data and Copyrights). At its least it might be a combination of view graphs, handouts and perhaps a contractor's employee in a video presentation. We can only hope it is some corporate vision of a multimedia presentation involving "personalities" and other more complicated rights situations (performance rights as one example).

Even with the clarification adding "graphics software," likely with restrictive license terms, there is not enough information to safely give a direct answer. Short of an on line forum FAR 27.406 (Acquisition of Data) exercise we have no way of knowing. This forum is inappropriate for such specific exercises in any case. That is why I immediately replied with "Get professional help" with full access to requirements and the agency's long range uses. I outlined some issues that perhaps need to be raised.

FAR Subpart 27.4 offers many options. Careful reading should be forewarning that the first step is clarity in what is being required for delivery assessed with plans for ultimate use. I believe that reading would also make clear that such a proposed acquisition could involve multiple, non overlapping clauses. The first task is a requirements scrub based on this view followed by grouping requirements that may need different data rights coverage.

A key question is whether any data requires 27.401 -- Definitions' "Unlimited rights" coverage. If so, exactly what part of the "presentation." Can that part then be severed from other deliverables? One example might be whether informational deliverables (hard copy hand outs and perhaps even the CD) are severable from the deliverable computer software (more likely to have much more restrictive license terms). The agency may have a need to at some time allow these items to be used by associated agencies and even non Federal entities in training. Obtaining the closest to "Unlimited rights" for these may be highly practical while doing so for every data item is difficult or expensive.

The CD is another requirements issue. If its content is allowed to be tightly coupled with the display software there is an issue of it then being dependent upon restrictive computer software licenses. Left to its own devices and interests ("cheaper" and "better" are only two possible arguments) a contractor might deliver a CD with content so tightly coupled to proprietary display software that the agency will be required to buy software each time they wish to distribute the CD. The agency needs to consider such things as immediate contract cost and expediency against life cycle goals in such decisions. It is possible to require a more open format that can be displayed by any number of commonly available software packages. It might not be as slick, but long term value may be increased.

in my opinion the issue of which clauses to apply where is relatively trivial when requirements have truly been scrubbed and parsed. Only then will the match of the clauses to most effectively cover the deliverable types be practical. I doubt that can be done in an open, on line forum.