Should I ask my employer to indemnify me against IP claims?
July 10, 2013 4:33 PM Subscribe
My new job includes editing and publishing materials to the Internet. We generate most of it in-house, but occasionally use stock photos, video provided by others etc. I would like my employment agreement to explicitly state that the company will not ask or require me to use works that we do not have permission to use, that they assert that any materials they provide are cleared for use, and that they will indemnify my against any claims that may arise if something becomes contested by someone claiming intellectual property rights. I want to offer them a one-paragraph section they can insert into the agreement. How do I write it?
I have had my intellectual property improperly used in the past, and as a freelancer I have had clients insist I use copyrighted works that I knew they did not have permission to use. I always had a term in my contracts stating that I would not use such materials, and that if a client demanded I use such materials it would be cause to terminate the contract.
In my brief time on this job so far I have seen the attitude that anything on the Internet is "fair game." I want to nip that in the bud wrt my own employment.
So three questions really:
1. Am I just being picky, or would it be prudent for me to ask for such a term to be added to my agreement? While the company is not large, they have cultivated several layers of bureaucracy that they use to rationalize an inflexibility when it comes to how they handle things like employment terms.
2. What should the clause say (or should I hire an attorney to draft it for me)? I want it to say that they will not ask or require me to use copyrighted materials without proper clearances, that they will provide proof of clearance upon request, that by providing me with materials we didn't generate they are asserting they have permission to use them, and that they will indemnify me if anyone makes an IP claim against me as a result of protected material being included in what I publish.
2. How do I approach bringing it up with the in-house HR guy (who is actually in-house counsel for the company and is just the HR point person for new hires - HR is mostly outsourced and all the documents come from the HR vendor) without communicating "I know all y'all are IP thieves, every last on of ya!"?
I feel like this would be a useful policy for them to have in general.
I have had my intellectual property improperly used in the past, and as a freelancer I have had clients insist I use copyrighted works that I knew they did not have permission to use. I always had a term in my contracts stating that I would not use such materials, and that if a client demanded I use such materials it would be cause to terminate the contract.
In my brief time on this job so far I have seen the attitude that anything on the Internet is "fair game." I want to nip that in the bud wrt my own employment.
So three questions really:
1. Am I just being picky, or would it be prudent for me to ask for such a term to be added to my agreement? While the company is not large, they have cultivated several layers of bureaucracy that they use to rationalize an inflexibility when it comes to how they handle things like employment terms.
2. What should the clause say (or should I hire an attorney to draft it for me)? I want it to say that they will not ask or require me to use copyrighted materials without proper clearances, that they will provide proof of clearance upon request, that by providing me with materials we didn't generate they are asserting they have permission to use them, and that they will indemnify me if anyone makes an IP claim against me as a result of protected material being included in what I publish.
2. How do I approach bringing it up with the in-house HR guy (who is actually in-house counsel for the company and is just the HR point person for new hires - HR is mostly outsourced and all the documents come from the HR vendor) without communicating "I know all y'all are IP thieves, every last on of ya!"?
I feel like this would be a useful policy for them to have in general.
If this is a concern of yours then what you need to do is sit down to discuss this with an attorney, not to draft a clause but to clarify your understanding on where the liability would sit in an IP claim lodged against your employer.
posted by DarlingBri at 5:28 PM on July 10, 2013 [1 favorite]
posted by DarlingBri at 5:28 PM on July 10, 2013 [1 favorite]
You should not ask your employer to indemnify you against IP claims. As an employer that just sounds crazy to me.
It's great that you don't want to use materials that you don't have the right to use. You should make that clear to your supervisor, and hopefully they will agree and that will be that. If your supervisor insists it's okay to use material that the company doesn't have the legal right to use, then you'll need to decide from an ethical standpoint whether you want to continue working there.
But asking for an "employment agreement to explicitly state that the company will not ask or require me to use works that we do not have permission to use, that they assert that any materials they provide are cleared for use, and that they will indemnify my against any claims that may arise if something becomes contested by someone claiming intellectual property rights"? Sorry, but as an employer I would never do something like that. It's insulting, it shows a lack of trust in me and my company, it is making work for me and costing me money to have my lawyer review it, and it potentially creates liability for me that wouldn't exist otherwise (because you could sue me, not because it would allow some uncredited artist could sue me instead of you). If an employee came to me asking for that kind of legal agreement I'd explain it's not necessary, that we don't use unlicensed material, and I'd hope that they'd drop the subject. If they insisted I probably wouldn't hire them. It's just too far from what employment agreements consist of, and not worth the legal bother.
posted by alms at 6:35 PM on July 10, 2013 [1 favorite]
It's great that you don't want to use materials that you don't have the right to use. You should make that clear to your supervisor, and hopefully they will agree and that will be that. If your supervisor insists it's okay to use material that the company doesn't have the legal right to use, then you'll need to decide from an ethical standpoint whether you want to continue working there.
But asking for an "employment agreement to explicitly state that the company will not ask or require me to use works that we do not have permission to use, that they assert that any materials they provide are cleared for use, and that they will indemnify my against any claims that may arise if something becomes contested by someone claiming intellectual property rights"? Sorry, but as an employer I would never do something like that. It's insulting, it shows a lack of trust in me and my company, it is making work for me and costing me money to have my lawyer review it, and it potentially creates liability for me that wouldn't exist otherwise (because you could sue me, not because it would allow some uncredited artist could sue me instead of you). If an employee came to me asking for that kind of legal agreement I'd explain it's not necessary, that we don't use unlicensed material, and I'd hope that they'd drop the subject. If they insisted I probably wouldn't hire them. It's just too far from what employment agreements consist of, and not worth the legal bother.
posted by alms at 6:35 PM on July 10, 2013 [1 favorite]
I agree with you, but you're being very picky and as an employer this would be a huge red flag.
posted by radioamy at 6:53 PM on July 10, 2013
posted by radioamy at 6:53 PM on July 10, 2013
Seconding what DarlingBri said: you should talk to an attorney and see how much of what you want is already covered by employment law. (I would assume, for example, that liability for things you do as a normal part of your job, are instructed to do by your boss, and don't know are illegal would lie with your employer, not you. But IANAL, you should talk to a L.)
posted by hattifattener at 8:14 PM on July 10, 2013
posted by hattifattener at 8:14 PM on July 10, 2013
The response that alms sets out is definitely what you should worry about from a prudential standpoint.
On the other hand, it's also prudent to protect yourself from liability for violating copyright laws. Definitely consult a lawyer about what your liability *as an employee* might be for such violations. The lawyer might suggest other ways of protecting yourself from liability.
I disagree with alms that it's "insulting" to ask an employer to sign the kind of statement you're contemplating. But it seems likely that an employer wouldn't want to sign it and would prefer to hire someone who doesn't stand up for themselves on this issue.
posted by unreadyhero at 8:26 PM on July 10, 2013
On the other hand, it's also prudent to protect yourself from liability for violating copyright laws. Definitely consult a lawyer about what your liability *as an employee* might be for such violations. The lawyer might suggest other ways of protecting yourself from liability.
I disagree with alms that it's "insulting" to ask an employer to sign the kind of statement you're contemplating. But it seems likely that an employer wouldn't want to sign it and would prefer to hire someone who doesn't stand up for themselves on this issue.
posted by unreadyhero at 8:26 PM on July 10, 2013
To add to what Alms said, there are also overtones that you want to be ironclad unaccountable for the quality of your work. Once copyright is no longer any concern of yours, how do they know they won't end up being rewarded by you playing fast and loose out of laziness and getting the company in trouble. Part of your job is to (be one of a group that will collectively) avoid copyright infringement. The company does not benefit from relieving you of your duties.
posted by anonymisc at 9:04 PM on July 10, 2013 [3 favorites]
posted by anonymisc at 9:04 PM on July 10, 2013 [3 favorites]
Best answer: I am not a lawyer, and I am not your lawyer. This is certainly not legal advice. You might want to talk to a lawyer who will be your lawyer giving you legal advice. You are at a complicated intersection of IP and employment law, as well as a mixture of state and federal laws.
Potential practical approach: Wait and see if it comes up. Be cool and say "Hey, this is looks like it could be infringement, we should avoid using x. What about doing y instead?" Frame it as looking out for the company's interests and offer a solution. Be a problem-solver/value-added.
Short legalish version: What DarlingBri said.
Longer legalish version:
I agree with the above that asking that this kind of clause be inserted into any contract might cause difficulties with your employer, particularly if they are inflexible as you say. They probably can find someone else who won't "raise a fuss." However, I wouldn't entirely write off potential personal liability. This applies to copyright--less sure on trademark and definitely on patent (though the latter sounds like it really wouldn't be at issue here). If your employer has an employee that commits infringement, they are generally liable under respondeat superior/agency theories in a civil suit. So, having you infringe, particularly at their behest, is not terribly smart on their part as they themselves could be liable for your actions. (This assumes you are an actual employee, not an independent contractor where things can get murkier yet.) Generally, the party infringed upon prefers to bring suit against the party with deeper pockets, i.e. the employer. HOWEVER, this, I believe, doesn't necessarily let you off the hook as you would also be infringing. If I am remembering right, there have been cases where the party infringed upon brings cases against both the infringing employee and the employer. It's rare, but not unheard of.
Further, if you knowingly infringe, whether at your employer's behest or not, there is potential criminal liability. It isn't prosecuted that often and probably wouldn't be for a random stock photo (there are commercial dollar amount values associated with the infringed materials to trigger this), but there are criminal penalties for willful infringement for commercial/financial gain under section 506 of the Copyright Act. Unlikely, but still something to consider depending on what you are using and how. (And, because there could be criminal consequences, you also potentially get into wrongful termination territory if you are fired for refusing to do something you know to be illegal. Like I said, a mess of employment, IP, state, and federal laws.)
I'm not trying to say that you'll be thrown in jail or slapped with a $250K fine for repurposing a copyrighted gif or anything, but there are consequences and if you are worried, you should think about, definitely talk to someone who knows the lay of the land in your jurisdiction about it and what it means for you, and ultimately decide whether this is the right situation for you.
posted by HonoriaGlossop at 9:25 PM on July 10, 2013 [1 favorite]
Potential practical approach: Wait and see if it comes up. Be cool and say "Hey, this is looks like it could be infringement, we should avoid using x. What about doing y instead?" Frame it as looking out for the company's interests and offer a solution. Be a problem-solver/value-added.
Short legalish version: What DarlingBri said.
Longer legalish version:
I agree with the above that asking that this kind of clause be inserted into any contract might cause difficulties with your employer, particularly if they are inflexible as you say. They probably can find someone else who won't "raise a fuss." However, I wouldn't entirely write off potential personal liability. This applies to copyright--less sure on trademark and definitely on patent (though the latter sounds like it really wouldn't be at issue here). If your employer has an employee that commits infringement, they are generally liable under respondeat superior/agency theories in a civil suit. So, having you infringe, particularly at their behest, is not terribly smart on their part as they themselves could be liable for your actions. (This assumes you are an actual employee, not an independent contractor where things can get murkier yet.) Generally, the party infringed upon prefers to bring suit against the party with deeper pockets, i.e. the employer. HOWEVER, this, I believe, doesn't necessarily let you off the hook as you would also be infringing. If I am remembering right, there have been cases where the party infringed upon brings cases against both the infringing employee and the employer. It's rare, but not unheard of.
Further, if you knowingly infringe, whether at your employer's behest or not, there is potential criminal liability. It isn't prosecuted that often and probably wouldn't be for a random stock photo (there are commercial dollar amount values associated with the infringed materials to trigger this), but there are criminal penalties for willful infringement for commercial/financial gain under section 506 of the Copyright Act. Unlikely, but still something to consider depending on what you are using and how. (And, because there could be criminal consequences, you also potentially get into wrongful termination territory if you are fired for refusing to do something you know to be illegal. Like I said, a mess of employment, IP, state, and federal laws.)
I'm not trying to say that you'll be thrown in jail or slapped with a $250K fine for repurposing a copyrighted gif or anything, but there are consequences and if you are worried, you should think about, definitely talk to someone who knows the lay of the land in your jurisdiction about it and what it means for you, and ultimately decide whether this is the right situation for you.
posted by HonoriaGlossop at 9:25 PM on July 10, 2013 [1 favorite]
Best answer: How can your company indemnify you from a lawsuit they wouldn't be bringing? Your premise is inherently flawed because a IP owner looking to sue wouldn't honor anything in your contract with the company. That contract was between you and your employer, not between you and the IP owner.
posted by inturnaround at 10:41 PM on July 10, 2013
posted by inturnaround at 10:41 PM on July 10, 2013
Best answer: Slightly different circumstances because I'm freelance not an employee and probably a different jurisdiction but my client actually gave me something to sign that's essentially what you're asking for.
This is the most relevant paragraph
2.1 The company agrees to indemnify and save harmless and defend at its own expense the developer from and against any and all claims of infringement of copyright, patents, trade marks, industrial designs, or other intellectual property rights affecting the web sites as the case may be PROVIDED THAT (i) the developer shall not have done, permitted or suffered to be done anything which may have been or become an infringement of any rights in any copyright, patent, trade mark or other rights as hereinbefore provided, and (ii) the developer shall have exercised a reasonable standard of care in protecting the same; failing which the developer shall indemnify the company against all actions, proceedings, costs, claims and expenses incurred in respect thereof.
So essentially it says they'll protect me so long as I'm not guilty in which case I agree to protect them. IANAL YMMV
posted by missmagenta at 2:58 AM on July 11, 2013 [1 favorite]
This is the most relevant paragraph
2.1 The company agrees to indemnify and save harmless and defend at its own expense the developer from and against any and all claims of infringement of copyright, patents, trade marks, industrial designs, or other intellectual property rights affecting the web sites as the case may be PROVIDED THAT (i) the developer shall not have done, permitted or suffered to be done anything which may have been or become an infringement of any rights in any copyright, patent, trade mark or other rights as hereinbefore provided, and (ii) the developer shall have exercised a reasonable standard of care in protecting the same; failing which the developer shall indemnify the company against all actions, proceedings, costs, claims and expenses incurred in respect thereof.
So essentially it says they'll protect me so long as I'm not guilty in which case I agree to protect them. IANAL YMMV
posted by missmagenta at 2:58 AM on July 11, 2013 [1 favorite]
IANAL, but it seems a bit weird to try to get that in a contract with your employer; copyright infringement is already illegal, and your employer can't compel you to do illegal things regardless of any contract. That in and of itself is illegal.
I think a better strategy would be, if it comes up, to make sure your superiors are informed about any potential infringements, document things with a paper/email trail, and state in no ambiguous terms that you won't do it unless a license from the copyright holder is obtained. If they fire you for this, you can take them to court (or not, and just find a different job, as this place is obviously not the right fit for you). In general though, I think a company would be glad to have a conscientious employee that is trying to reduce its risk; should the infringement have occurred, more likely than not, it's the company that would primarily be on the hook for damages (though again, IANAL).
If you decide to buckle under the pressure and infringe anyway, I doubt any contract will save you from any repercussions.
posted by Aleyn at 10:02 AM on July 11, 2013
I think a better strategy would be, if it comes up, to make sure your superiors are informed about any potential infringements, document things with a paper/email trail, and state in no ambiguous terms that you won't do it unless a license from the copyright holder is obtained. If they fire you for this, you can take them to court (or not, and just find a different job, as this place is obviously not the right fit for you). In general though, I think a company would be glad to have a conscientious employee that is trying to reduce its risk; should the infringement have occurred, more likely than not, it's the company that would primarily be on the hook for damages (though again, IANAL).
If you decide to buckle under the pressure and infringe anyway, I doubt any contract will save you from any repercussions.
posted by Aleyn at 10:02 AM on July 11, 2013
@inturnaround Generally speaking, indemnification for 3rd party claims is extremely common. No comment on OP's question.
posted by anathema at 1:37 AM on July 20, 2013
posted by anathema at 1:37 AM on July 20, 2013
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posted by zadcat at 5:04 PM on July 10, 2013