Intellectual infrastructure: IP 101 for construction and design professionals | Dorsey & Whitney LLP

From initial design plans to the finished project, including the selection and fabrication of materials, many components of a construction or infrastructure project can give rise to intellectual property (“IP”) issues for professionals. of construction and design. Believe it or not, intellectual property plays a key role in any construction project and is therefore something that anyone involved in the construction industry should be aware of. This article provides a high-level overview of the broader categories of intellectual property that could impact your construction project or business.

Trademarks

In short, a mark is a source identifier. A trademark consists of words, symbols, logos or other designations used to identify the particular source of goods or services. Trademark rights can be acquired simply by using the mark in commerce, but registering the mark with the U.S. Patent and Trademark Office (“PTO”) confers additional legal benefits and may facilitate the registration process. ‘application.

In the construction industry, trademark issues mainly arise with respect to trade names of contractors or sub-contractors, project names or joint venture names, which leads to potential confusion. Since construction companies often include the surname of the original owner, it is important to know that a mark, which is “mostly just a surname”, is considered a generally weak mark and evidence. may be required to register and/or enforce it. . Trademark rights may also arise in names of buildings (eg, Empire State Building®) applied to real estate or other services or goods, resulting in litigation. The litmus test and key to avoiding or dealing with counterfeiting is whether there is a likelihood that your mark will be confused with someone else’s.

Copyright

A copyright protects the works of the original author fixed in a tangible medium. This includes project drawings, blueprints, written documents, technical designs, photographs, and even the finished building or project design itself. Copyright grants the owner the exclusive right to use, reproduce and derive other commercial benefit from the copyrighted work for a specified period of time. Copyrights arise when a work is created; but, when registered with the Copyright Office, the copyright owner has the right to sue for infringement and may collect damages and attorneys’ fees if the registration is pursued early.

Copyright issues can arise regarding ownership and right to exploit a particular work. Take for example project plans and building plans. The copyright in these construction plans generally belongs to the author of the plans, who is often the architect. The client will not be considered the author or owner of the plans and may encounter an infringement problem, unless (1) the plans fall within certain categories of works and are the subject of a written agreement attributing ownership of the original author to the owner project, or (2) the plans were prepared in the course of the author’s employment, as an employee of the owner of the project. The main thing to remember for construction and design professionals when it comes to copyright issues is who is creating the copyrighted material and who will be the ultimate owner of that material, then ensure that appropriate written agreements documenting the nature and details of the parties’ relationship are obtained.

Trade secrets

Trade secrets protect confidential aspects of a business, such as business methods or information. Trade secrets can cover virtually any type of information that has economic value to the owner, is not generally known to the public, and is the subject of reasonable efforts on the part of the owner to maintain secrecy. Common items protected as trade secrets are customer lists, marketing strategy, pricing strategy and policies, certain contracts, and competitively sensitive information. Trade secrets are not subject to any sort of registration process. Instead, the trade secret owner must use nondisclosure agreements or other confidentiality measures to ensure that these aspects of their business remain secret.

Until 2016, trade secret case law and allegations of misappropriation were governed solely by state and common law. However, the passage of the Defend Trade Secret Act (“DTSA”), 18 USC 1836, et. following. created a federal cause of action for owners of trade secrets, expanded the definition of a trade secret, and provides expansive remedies, such as treble damages, attorneys’ fees, and civil distraint.

The key takeaway here: if, as a construction and design professional, you believe you have valuable sensitive information that you want to protect as a trade secret, make sure you have at least confidentiality agreements. and/or appropriate non-disclosure agreements with each employee. or an entity that can have access to this secret information and limit the universe of people who have access to this information. Once this information becomes public knowledge, trade secret protection ceases and the value of previously protected information diminishes.

Patents

Patents give the owner a temporary monopoly in the United States (or other countries where patent registration is granted) to make, use, or sell a patented machine, article of manufacture, process, method, or another patentable invention. Unlike copyrights and trademarks, the PTO must grant patents before rights can arise.

There are two types of patents: (1) a utility patent, which protects a new, useful, and non-obvious machine or process and (2) a design patent, which protects any new or original design of an object. As a construction or design professional, a utility patent would protect a newly invented construction process, equipment, material, or business method that gives you a competitive advantage. However, the key to remember here is that when your team comes up with new ideas or discoveries, do your research to make sure what you came up with is different from what has already been used or discovered. If you’re not careful, patent infringement litigation can be very expensive, both in terms of attorney’s fees and potential damages.

Manage intellectual property risks on a project

So now you’re probably thinking, “how can I protect my project or the work I’ve done and mitigate these breach risks?”

A response is proper documentation. This means keeping detailed and organized records of every step of the construction and design process, with most of this work done before you even start the project. All entities and workers associated with the project should be subject to appropriate contracts which should contain provisions relating to intellectual property (e.g. who owns it, how it may be used and transferred, and dispute resolution) and confidentiality or non-disclosure (particularly for trade secrets) provisions. If separate agreements or licenses are required, these documents should detail the categories of intellectual property that are protected, what can be used, and who can use them without fear of infringement. The registration of this intellectual property should also be pursued early.

In addition, all research conducted, processes developed, dates of key actions, and meeting records or documentation should detail who, when, why, where, and what was discussed or developed (particularly for patents). For example, if a team of engineers discovers or develops a unique and useful construction process, keep detailed records of the steps in that process, key dates, key documents, or other commemorated work products, and roles. and the contributions of the people on this development team. . If you have meetings with others inside or outside the organization, keep organized records of who attended, what was discussed, and the dates and times of those meetings.

The business value of your construction project lies not only in the completion of the project, but also in controlling ownership and/or use of intellectual property and in preventing infringement. It is important that construction and design professionals take the time to consider these risks and have the right documentation in place now to avoid costly and avoidable intellectual property litigation in the future.

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