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Guidance note 3: Procuring copyright works (updated Jan 2015)

This guidance note:

(a)  sets out suggested paragraphs for insertion into requests for proposals, requests for tenders and requests for quotes (Notices of Procurement) that seek the creation of copyright works (e.g., research reports, illustrations, photographs, audio works, film);

(b)  comments on and sets out suggested clauses for insertion into Government Model Contract (GMC) templates that are likely to be used for such purposes;[1] and

(c)  comments on taking this kind of approach under NZGOAL versus allowing suppliers to own new intellectual property rising from ICT contracts under the Guidelines for treatment of intellectual property rights in ICT contracts (IP/ICT contract guidelines).[2]

This guidance note does not:

(a)  address non-copyright works;

(b)  cover the treatment of copyright in newly developed software code, as software is currently beyond the scope of NZGOAL; or

(c)  constitute legal advice; agencies should seek legal advice from their legal advisors to the extent required.

 

1. Introduction and context

1 The New Zealand Government Open Access and Licensing framework (NZGOAL), originally released in August 2010,[3] anticipated that additional guidance notes would be released over time. These guidance notes would:

(a) explore, in greater detail, some of the issues addressed or raised in NZGOAL; and

(b) address operational or technical issues which arise in practice, whether on the part of State Services agencies that are implementing NZGOAL or members of the public who are re-using copyright works and non-copyright material released in accordance with NZGOAL.

2 One of the NZGOAL policy principles addresses the issue of "Procuring and preparing copyright works and non-copyright material", as follows.

"Procuring and preparing copyright works and non-copyright material

56  When procuring, preparing or commissioning copyright works and non-copyright material, State Services agencies are encouraged to consider whether such works and material should, in accordance with these Policy Principles, be released to the public for re-use.

57 Where such works and material should be released to the public for re-use, State Services agencies should, where applicable, consider the steps that may be required as part of their procurement and contracting processes to ensure they have the relevant rights to so release. Such steps may include:

(a)  ensuring the agency owns the copyright in any relevant commissioned copyright works or otherwise obtains a broad licence from the copyright owner allowing the agency to sub-license the works on Creative Commons terms (or more restricted terms where the Creative Commons model is not appropriate), by specifying this as a requirement in procurement documentation (if any) and drafting contractual provisions accordingly;

(b)  ensuring, where practicable and relevant, that non-copyright material is not subject to either confidentiality obligations owed to third parties or other contractual restrictions; and

(c)  ensuring that procured or commissioned copyright works or non-copyright material are not encumbered by externally-imposed digital restrictions, by specifying this as a requirement in procurement documentation (if any) and drafting contractual provisions accordingly.

58  Agencies are also advised to be cautious of provisions which consultants or researchers may endeavour to include in agreements that would require agencies to co-brand reports, research papers or other outputs. The existence of co-branding can raise downstream licensing complexities which it may be preferable to avoid through not accepting such provisions in the first place.

59  Paragraphs 56-58 are subject to any statutory, policy or commercial imperatives to the contrary."

3 An issue that has arisen in practice is this: what specific provisions should agencies include in their tender documentation and contracts, when procuring services that entail the commissioning or creation of copyright works, to ensure they can release resulting copyright works to the public in accordance with NZGOAL if they wish?

4 This guidance note addresses this issue.

5 The suggested clauses can also be used in other forms of contract (i.e., in cases where the GMC templates are not used) but their numbering and "fit" with relevant surrounding contractual provisions should be checked by a member of the procuring agency's legal team.

 

2. Paragraphs for Notices of Procurement

6 Where a Notice of Procurement relates to services that will entail the creation of copyright works that the procuring agency may wish to release for re-use in accordance with NZGOAL, in circumstances where there is unlikely to be any commercial, security or other sensitivity about releasing them for re-use, the agency is encouraged to include the following paragraphs in the Notice of Procurement. Doing so is consistent with Rule 61 (Intellectual Property) of the Government Rules of Sourcing. The paragraphs are written on the assumption that a draft contract is attached to the RFP and that the draft contract confers ownership of new intellectual property rights on the procuring agency:

"Copyright and licensing

Respondents should note that [name of procuring agency] will own copyright in new copyright works created as a result of this procurement and may elect to release and license them for re-use in accordance with the New Zealand Government Open Access and Licensing framework (NZGOAL). Except as indicated below, respondents should not seek to alter the intellectual property provisions in the draft contract attached to this RFP that confer ownership of new intellectual property on [name of procuring agency].

Respondents may, however, have a legitimate interest in being able to re-use such copyright works before [name of procuring agency] licenses them for re-use in accordance with NZGOAL. Where that is the case, respondents should request an appropriate licence from the procuring agency allowing them to do so.

If a respondent feels there is overwhelming commercial or other reason as to why it must own the copyright in new copyright works under the contract, it should raise this with [name of procuring agency]. The respondent should expect that, if [name of procuring agency] allows the respondent to own copyright in new copyright works, [name of procuring agency] will require a licence to [name of procuring agency] that allows [name of procuring agency] to use the works for any purpose and to sub-license them for re-use under one or more of the licences referred to in NZGOAL."

 

3. Clauses for insertion into contracts

Default position under the Government Model Contracts: Procuring agency owns new IP

7 If a State Services agency attaches one of the Government Model Contracts for Services to its Notice of Procurement and uses it (unamended) as the governing contract, the agency will own the copyright in delivered new original works contemplated by the contract. This is because the GMCs already contain the following intellectual property rights clause in their Standard Terms and Conditions (in Schedule 2):

"Ownership of Intellectual Property Rights

12.1 Pre-existing Intellectual Property Rights remain the property of their current owner.

12.2 New Intellectual Property Rights in the Deliverables become the property of the Buyer when they are created.

12.3 The Supplier grants to the Buyer a perpetual, non-exclusive, worldwide and royalty-free licence to use, for any purpose, all Intellectual Property Rights in the Deliverables that are not owned by the Buyer. This licence includes the right to use, copy, modify and distribute the Deliverables."

There is no need to duplicate this clause again.

8 Caution is required, however, where the copyright works in question might contain pre-existing copyright content owned by the supplier that will be creating the new copyright works. If, for example, a report were to contain an appendix that was a pre-existing copyright work of the supplier, the procuring agency may not obtain ownership of the copyright in that appendix. The procuring agency would be entitled to use the appendix in the broad variety of ways set out in clause 12.3 of the GMC (above), but it is not clear that that clause would permit the procuring agency to sub-license the appendix, as part of the overall work, for re-use under a Creative Commons (or other) licence in accordance with NZGOAL.

9 Where this scenario might arise, procuring agencies should amend clause 12.3 of the GMC. They do this by amending that clause in the field at the end of Schedule 1 (Contract Details and Description of Services) labelled "Changes to Schedule 2 and additional clause/s". Procuring agencies should add the following text in that field:

Clause 12.3 of Schedule 2 is replaced with the following amended clause:

"12.3 The Supplier grants to the Buyer a perpetual, non-exclusive, worldwide and royalty-free licence to use, for any purpose, all Intellectual Property Rights in the Deliverables that are not owned by the Buyer. This licence includes the right to use, copy, modify and distribute the Deliverables and to sub-license any Intellectual Property Rights in the Deliverables and the Deliverables themselves for re-use under any Creative Commons or other licence referred to in the New Zealand Government Open Access and Licensing framework (available at http://ict.govt.nz/guidance-and-resources/information-and-data/nzgoal)."

 

Amending the Government Model Contracts to license the supplier to re-use copyright works

10  Where a respondent has a legitimate interest in being able to re-use the output copyright works it creates in carrying out a contract (common examples being agencies’ commissioning of photography or video footage) and the procuring agency is happy to grant a licence,[4] the relevant GMC can be amended to allow it. The GMC does need amending in such circumstances because, by default, its Standard Terms and Conditions (in Schedule 2) do not confer any licence on the supplier.

11  This can be done either before releasing the draft contract with the Notice of Procurement or upon a licensing request by the respondent. If there is a reasonable likelihood that the supplier will want to re-use such works, it may be helpful to amend the GMC before attaching the draft to the Notice of Procurement. Doing so might prevent unnecessary debate on copyright and licensing issues.

12  Again, a purchasing agency amends the GMC by amending clause 12 in the field at the end of Schedule 1 (Contract Details and Description of Services) labelled "Changes to Schedule 2 and additional clause/s". Procuring agencies should add the following text in that field:

Clause 12 of Schedule 2 is amended by adding the following new clause 12.3A:

"12.3A Without limitation to clause 13 (Confidentiality) and except for agency or government logos, coats of arms, emblems and trade marks (if any), the Buyer grants to the Supplier a perpetual, non-exclusive, worldwide and royalty-free licence to use, for any purpose, all Intellectual Property Rights in the Deliverables that are not owned by the Supplier. To the extent permitted by law, the Buyer disclaims all implied conditions, representations and warranties in relation to the licence."

 

Amending the Government Model Contracts to enable the supplier to own new copyright works and license them to the procuring agency

13  This example is not likely to arise often in practice, except perhaps in ICT contexts (where the IP/ICT Contract Guidelines apply) and other analogous contexts where there is strong commercial or other reason for the supplier to own the copyright in new original works and the agency can get what it needs through licensing rights.

14  Where this is the case, the procuring agency is comfortable with allowing the supplier to own the copyright and where the agency does, nevertheless, wish to be able to license the new copyright works in accordance with NZGOAL, it should amend the GMC accordingly.

15  Again, an agency amends the GMC by amending clause 12 in the field at the end of Schedule 1 (Contract Details and Description of Services) labelled "Changes to Schedule 2 and additional clause/s". Procuring agencies should add the following text in that field:

Clause 12 of Schedule 2 is amended by deleting clauses 12.2 and 12.3, and replacing them with the following new clauses 12.2, 12.3 and 12.3A:

"12.2 Without limitation to clause 13 (Confidentiality), New Intellectual Property Rights in the Deliverables become the property of the Supplier when they are created.

12.3 The Supplier grants to the Buyer a perpetual, non-exclusive, worldwide and royalty-free licence to use, for any purpose, all Intellectual Property Rights in the Deliverables. This licence includes the right to use, copy, modify and distribute the Deliverables and to sub-license any Intellectual Property Rights in the Deliverables and the Deliverables themselves for re-use under any Creative Commons or other licence referred to in the New Zealand Government Open Access and Licensing framework (available at http://ict.govt.nz/guidance-and-resources/information-and-data/nzgoal).

"12.3A Without limitation to clause 13 (Confidentiality) and except for agency or government logos, coats of arms, emblems and trade marks (if any), the Buyer grants to the Supplier a perpetual, non-exclusive, worldwide and royalty-free licence to use, for any purpose, all Intellectual Property Rights in the Deliverables that are not owned by the Supplier. To the extent permitted by law, the Buyer disclaims all implied conditions, representations and warranties in relation to the licence."

 

Amending the Government Model Contracts to prohibit digital rights management restrictions

16  As noted in the State Services Commission's Trusted Computing and Digital Rights Management Principles & Policies (September 2006):[5]

"12.3B Digital rights management (DRM) is a set of technologies designed to apply and enforce persistent access restrictions to digital information, as specified by the information provider. Digital rights management can regulate the types of actions that can be done with information (for example, view, print, copy or modify) and the time frame in which that information remains accessible."

17  If there is any prospect of a supplier imposing DRM restrictions on digital versions of copyright works created under the contract, procuring agencies should amend the draft GMC to prohibit such restrictions.[6] Doing so is consistent with the NZGOAL Policy Principle on DRM.

18  Again, an agency amends the GMC by amending clause 12 in the field at the end of Schedule 1 (Contract Details and Description of Services) labelled "Changes to Schedule 2 and additional clause/s". Procuring agencies should add the following text in that field:

Clause 12 of Schedule 2 is amended by adding the following new clause 12.3B:

“The Supplier shall not apply any digital rights management restrictions to or embed any such restrictions within the Deliverables, including (without limitation) restrictions on the Buyer's ability, either on receipt of the Deliverables or at any time in the future, to save, copy, modify, archive, view, print, listen to, forward or otherwise distribute the Deliverables. The Supplier will also supply any digital versions of the Deliverables to the Buyer in the formats reasonably requested by the Buyer, including non-proprietary formats.”

 

4. This guidance note and the IP/ICT contract guidelines

19  It is sometimes thought that NZGOAL and the IP/ICT contract guidelines are not entirely consistent. This view arises from the fact that:

(a)  on the one hand, NZGOAL encourages agencies to either retain ownership of, or obtain broad licences to, copyright works they create or have created for them, to enable them to license them for re-use with Creative Commons licences; whilst

(b)  on the other hand, the IP/ICT contract guidelines encourage agencies to allow suppliers to own new intellectual property rights arising from ICT contracts, the premise being that suppliers are the best placed to commercialise such rights.

20  More often than not, however, there will be no inconsistency between NZGOAL and the IP/ICT contract guidelines because:

(a)  NZGOAL expressly does not apply to software, which is usually the main target of supplier ownership under the ICT guidelines; and

(b)  the IP/ICT guidelines do, in any event, recognise that a valid reason for agency ownership of new IP is where the agency "intends to allow free use of the [intellectual property rights] on open source terms".

21  To the extent that there ever is a conflict (one possible example being the creation of copyright documentation in relation to new software), the parties should be able to sort out the conflict with appropriate cross-licensing rights. If, for example, new software is to be owned by the supplier, yet there is a case for Creative Commons licensing of associated documentation, one solution is for the supplier to own the copyright in the documentation but to confer a licence on the procuring agency that allows it to use it for any purpose and sub-license it on Creative Commons terms, as per the sample amendment to the GMC at paragraph 15 above (clause 12.3A).

 


 

[1] The GMC templates can be found at http://www.business.govt.nz/procurement/for-agencies/government-model-contracts

[2] The IP/ICT contract guidelines can be found at http://ict.govt.nz/guidance-and-resources/open-government/procurement-advice/guidelines-for-the-treatment-of-intellectual-property-rights-in-ict-contracts/

[3] See https://www.data.govt.nz/manage-data/policies/nzgoal/.

[4] Before granting such a licence, the procuring agency should consider whether there are any security or other concerns that would make the broad licence suggested in paragraph 12 inappropriate

[5] Available at https://www.data.govt.nz/assets/Uploads/tc-and-drm-principles-policies-sept-2006.pdf [PDF 618 KB].

[6] For more information on Trusted Computing and Digital Rights Management Principles and Policies, see http://ict.govt.nz/guidance-and-resources/information-management/privacy-and-security/trusted-computing-and-digital-rights-management/.

 

Last updated 8 January 2015

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