Does the customer or design engineer own the designs? Schematics?

[jpanhalt]

1) Let's say you are right and the creator owns 100%.  That's like any other IP ownership.  It is up to you in civil court to sue the other party.  You can act in your own behalf, but that would probably not be wise.  As I suggested in my first post, the best approach might be  for the two parties to sit down and agree on what's fair.

2) There is a concept of "adverse possession."  In the US, that usually applies to real property (i.e., land). (https://www.law.cornell.edu/wex/adverse_possession).  One would have to do more research to determine whether the concept can be extended to IP.

[mikeselectricstuff]

Seems to me that the company has been totally negligent in not ensuring they have copies of/rights to what they need to continue doing business - that's their problem. Even if they can show that they have rights to the IP, that is a seperate issue to the physical files - if they don't have their own copies then the IP ownership is a moot point.
The files are likely of negligible value of anyone else but that company. Seems like the family/executors hold all the cards here

[mikeselectricstuff]

The problem the company has is that if they need access to those files and don't have physical possession of them, they need to get them one way or another.  And stealing them (or worse) is a pretty bad way to go about it.

Though not out of the question - pay some local crook to steal  them, and later they "magically" find a backup copy they'd forgotten they had.
I'd make sure they were somewhere that they couldn't readily be found.

[mikeselectricstuff]

     -After simulation testing he sent the schematic, firmware, and manual to the company (along with lists of required parts if necessary)

Do you know for sure that the company does not have copies of the files ?
 
i.e. is it the case that they need the files in order to continue the business, or that they want to ensure they don't get into anyone else's hands?
I imagine it may be a bit of both, they probably have some but not all, firmware but no source etc.

In the former case, the family/executors are in a very strong position, but the latter, not so much - it would be very hard to prove any IP ownership if the company just carried on, especially as the engineer was paid for the work as opposed to getting any royalty.

[mikeselectricstuff]

Unfortunately I do think that the company's presumption of 100% ownership establishes that a lawyer will have to be involved. Not in any hostile way, just to work towards determining ownership of these designs. It seems so obvious to me that without a contract claiming otherwise, the designer (or "author") owns the original designs but their certainty of ownership really threw me. I only mentioned the seeming distinction of his work regarding the potential for a patent and not that it would inherently establish ownership on the designer's part. Thank you for replying. So much has been cleared up for me thanks to this forum.

IANAL but the fact that he was paid for time spent rather than royalties etc. could be a strong indicator that they have some claim to the IP, though there is probably a big grey area in delineating the IP required for production of the specific thing he was asked to design ( gerbers, firmware etc.) vs. the source code, native PCB files etc.
If it is the case that the company does not have copies of the  files, and as seems likely they are of negligible value to anyone else, then the pragmatic approach may simply to be to make it just about ownership of the physical files and avoid the whole IP rights issue entirely, as that could easily swallow a lot of time and money.
Something along the lines of "Make us an offer for copies of the files, plus an agreement to not dispute any  IP issues"

[mikeselectricstuff]

Unfortunately I do think that the company's presumption of 100% ownership establishes that a lawyer will have to be involved. Not in any hostile way, just to work towards determining ownership of these designs. It seems so obvious to me that without a contract claiming otherwise, the designer (or "author") owns the original designs but their certainty of ownership really threw me. I only mentioned the seeming distinction of his work regarding the potential for a patent and not that it would inherently establish ownership on the designer's part. Thank you for replying. So much has been cleared up for me thanks to this forum.

Even if they have a valid claim that they own the designs, that would not give them any rights to possess the files - it is through their negligence that they don't have them ( assuming this is the case) 

[floobydust]

The design engineer having passed away, the estate would own the design files and complicate any negotiations. Lawyers do like to make work and money in battles.

If there is a safety aspect to the product design, you don't give the design to a customer without protection against the customer making changes and creating an unsafe product. For that reason engineers will stamp designs.
It does bring up the argument about who is liable for the product's failings, the design engineer or his client? I would expect a contract exists.

[nctnico]

Unless the company can find a very talented engineer I really feel the owner will have no choice but to, if the designs or schematics are able to be sold, sell them himself (and then the company is finished but considering the company made around 100 million dollars in the last 10 years imagine what he could sell them for?) and I just feel it would be so wrong for he alone to benefit from the culmination of 65 years of another man's work while the engineer's wife along with the tech and the other engineer that supported the design engineer for 20+ gets nothing. All just because the engineer didn't want to deal with customers?

Typically engineering just costs money for a company so it isn't well rewarded to start with. Profit comes from the sales department where the real value is added. It sounds unfair but it is how the world works. Generally speaking you can find somebody to work on even the most complicated circuits as a replacement for an engineer who has left. All in all I'd be careful with throwing a large monetary number at the company; they might slam the door on you. But I do think you need some assistance in assessing the value and ownership from someone who has dealt with this situation before. So, if I where you I'd start calling law firms and try to get a free initial consult from a few of them.

[bdunham7]

Unfortunately I do think that the company's presumption of 100% ownership establishes that a lawyer will have to be involved. Not in any hostile way, just to work towards determining ownership of these designs. It seems so obvious to me that without a contract claiming otherwise, the designer (or "author") owns the original designs but their certainty of ownership really threw me. I only mentioned the seeming distinction of his work regarding the potential for a patent and not that it would inherently establish ownership on the designer's part. Thank you for replying. So much has been cleared up for me thanks to this forum.

In any case, even if the company establishes some rights with respect to the designs that they have produced and sold (they don't have copies??)  they aren't entitled to the sum total of his life's work, especially since they paid him via 1099 which implies that he was not intended to be a statutory employee.  For those of you outside the US, paying an independent contractor via 1099 and claiming or requiring that they only work for you are incompatible positions.

If there have been actual statements regarding taking (stealing) the files, I'd recommend you take steps to physically secure them.  Depending on where you are and what the current state of the probate case is, an emergency petition to the probate court may be in order.  When you are looking for a lawyer, you need to find one competent in probate and small business matters in your specific locality.  You do not need an 'IP' lawyer at this point and consulting IP specialists at this point may be frustrating and counterproductive.  The first step, IMO, is to get a decent handle on how much value (money) may be involved. 

[tpowell1830]

I am no lawyer and this is not legal advice, however, if it were me, i would find a general lawyer that seemed a bit trustworthy and explain the basics and ask for advice for a specialty lawyer as a referral. A small law office could probably refer you adequately. Either way, your friend's wife will need the lawyer if only to fend off any advances toward taking the property. Once the company knows they have to go through a lawyer, they will realize this will not be easy.

Also, and this is only my opinion, the company has copies of all designs, at least in paper form, so they are after the source files to continue or improve. This must be worth something to them, although not millions, but perhaps tens of thousands. As someone else pointed out, if you or someone else close to the widow separated and copied all of these files, it could be worth a few thousand dollars to the company for you to do so, if the widow agrees, or is forced to give them the source files. They can't just barge in and take stuff. As theses things go, however, it is best to act quickly.

Either way it goes, the widow needs a lawyer and it is good that you are helping her, however, you need to realize your boundaries in this matter. It is easy to get emotionally involved and start making decisions for the widow that perhaps is not in her best interests from her perspective (not yours).

Good luck with this.

As always, this is my 2 cents...

[peter-h]

This stuff is country specific but a reasonable working assumption is that if you are employed then your employer owns the work, and if you have "commissioned" someone to design something for you then you own the work.

The first one is obvious, notwithstanding the fact that practically every design engineer takes everything home and makes use of it in their next job

The second one is less obvious and there are grey areas. For example the work he does is very likely based on work he has done before (it is very hard to make a living if one does not re-use stuff done previously for other customers) and got paid for by others who also thought they owned it So he is not in a position to assign you the copyright, anyway. But if say you commission an artist to create a sculpture for you, to your spec, then the default position is that you own the copyright.

Some specific angles are e.g. if you wrote some software or designed some circuit, and you did it on computers provided by Company X, then very likely X owns the whole lot. That is obviously the standard "employment" scenario. Lots of people have got into legal trouble this way: moving to another company and "creating" a load of code there which happens to be the same as what they did in their previous company. The previous employer merely needs to show that their tools were used.

But if you are working on the premises of a company as a contractor, whose computer / scope / etc are you using? For tax reasons related to establishing a self employed status, you probably should make sure all equipment you use is your own. Then who owns the work? If anybody actually cares, there should be a contract.

This stuff has been fought over painfully over decades in the professional photography trade. The protographers made money on the photoshoot, and then made regular money on the supply of prints for press releases (they retained the negatives and all the rights). Hard to believe today! But then most of them went bust, when many people learnt how to take acceptable photos themselves (1980s). I know a professional photographer and nowadays he just hands everything over and doesn't care what happens afterwards. He hands over the full-res versions when he's been paid

[nctnico]

and if you have "commissioned" someone to design something for you then you own the work.

And that just isn't the case! Copyright is pretty strong.

Another example is an architect. Even though you pay an architect to design your home, the architect owns the rights to the design and even can prevent you from making modifications to your home. Even something simple like painting your home in a different color can get you into trouble.

[artag]

When repeat boards were manufactured, did the engineer get any sort of royalty  ?
If they generated continuing revenue for him it's difficult to see why that shouldn't continue to his estate.

[peter-h]

As I said, this is country dependent. Here in the UK, the architect has no say whatsoever in what you do with the design.

Professional photography Ts & Cs used to be like that 40+ years ago here.

[b_force]

Is this not just basically the same discussion about anything else that involves ownership and/or copyrights?

As far as I know, as long as there is not a proper contract signed, standard default ownership and copyrights are being applied.
Meaning that the person who is creating the piece (art, schematic, music, text whatever), is the rightful owner of everything.
Technically this is country specific, in the majority of at least western countries, this rule applies.
(with some different detail here and there)

Only when a contract and/or a NDA is signed, this can be changed.
In that case this ownership has been legally transferred to another person or company.

So by default, the designer is always the owner of the design, since he was the creator (like anything else that can by copyrighted or owned).

Obviously it's needless to say that it won't be a wise idea at all to work this way and in fact should raise many red flags when one of your customers is just to "easy going" with this.
Because in the long run this always will result in discussion or even bigger problems.

Just always disclose those things in a contract including other details you're comfortable with, before you start any job.

For example, in some cases it can also be handy to disclose that "obvious/jelly bean circuitry" does not fall under these things, but only the entire concept as a whole.
Which can be very helpful for naive costumers who think that their little design is so super unique, while for any other electronics engineer it's kinda general knowledge. There are only so many ways to design a ADC front-end for example.


Owning backup files doesn't have much to do with this, although as rightfully owner you can basically prohibit people from having copies.
For public websites, that is obvious, but for peoples private belongings no so much, since there are privacy laws at play.
This is a different story when that person shares those copies with other people.

For those who prefer these things more in a nice confined video, LegalEagle on Youtube most definitely has a video about this subject somewhere.

[dietert1]

I'm a freelancer in a similar situation. I do have a simple written contract, though.
Some years ago, when i returned from vacation, police showed up the next day. Their story was that one company i work for had asked them to break open our office building to check what is going on. Lucky enough police did not do that.

If there is no written contract, the legal situation may be undefined. Except, in order to advance the discussion the company could present testimony for a spoken agreement. If they can't, one would try to use legal patterns to understand what kind of relation existed. As far as i understand the relation wasn't "exclusive" for either side. If the company wants to aquire and give the IP to somebody else to try and continue, they should make an offer. Probably the IP already got lost, when the head behind it left.

Regards, Dieter

[b_force]

the legal situation may be undefined.

That basically doesn't exist.
There are always default states in any law.
A few exceptions exist for very rare cases when very new technology is involved.
But that most certainly doesn't apply here.

Btw, IP is NOT the same as copyrights or right of ownership!

Interesting that police shows up in your example btw.
I guess that's maybe difference in how different countries operate.
Without any formal search warrant they don't have any legal rights to be in your property.
I don't really see how that could be done for something as simple a copyright infringement.
Still, that infringement still just has to be notified by letter to the person (or company) involved.

If a company has a problem with something, they have the formal duty to first and foremost inform those who are involved about it.
If those who are involved disagree with this, they can take that to court.
But you can't just take justice in your own hands and just randomly show up at peoples doorstep. (even less so without noticing)
Mostly because at that point the situation is undetermined, only a judge can tell who is right or wrong.

Only a judge can also give out such a search warrant anyway if they find it necessary when people aren't cooperating.