You have asked the Professional Guidance Committee for an opinion whether an application by you for copyright registration for an otherwise unidentified work proposed by you in the context of a paper produced for your firm and on behalf of a client might present you with certain obligations under the Rules of Professional Conduct. In response to your inquiry, the Committee believes that Rules 1.6 (Confidentiality of Information), 1.15 (Safekeeping Property) and, to a lesser extent, Rule 1.8(a) and (d) may have implications for the proposed course of conduct.
At the outset, the Committee notes that your inquiry recognizes that an alternative available to you is to simply rewrite the paper in the form of an article and then seek a copyright. The Committee believes this course of action is, in fact, available to you and is appropriate.
It appears clear that the work in question was generated in the "for hire" context. The materials provided with your Inquiry establish that a "work made for hire" is, inter alia, work "prepared by an employee within the scope of his or her employment...." The materials also provide that if the work for which you seek registration was "made for hire" you are required to list either the full legal name of your employer or of the client for whom the work was prepared as the "author" of the work on any application for copyright registration.
Rule 1.6(a) dealing with confidentiality of information, provides:
(a) Lawyers shall not reveal information relating to representation of a client unless the client consents after consultation, except for disclosures that are impliedly authorized in order to carry out the representation and except as stated in paragraphs (b) and (c) [N.B.: Neither subsections (b) or (c) of Rule 1.6 apply.]
The Comments to the Rule, while not having the force of law, are helpful in illustrating that the notion of "information relating to representation of a client" is a broad one. Specifically, the Comment to Rule 1.6 notes:
The rule of client-lawyer confidentiality applies in situations other than those where evidence is sought from the lawyer through compulsion of law. The confidentiality rule applies not merely to matters communicated in confidence by the client but also to all information relating to the representation, whatever its source.
It seems to the Committee that in making the proposed copyright registration application, you will have to disclose the identity of the client on whose behalf the work containing your unique and original concept was generated. The Committee is concerned that the mere disclosure of the existence of a client-lawyer relationship between your client and your former firm and/or yourself could constitute a breach of the obligation not to reveal information relating to the representation of a client. Accordingly, the Committee advises that if you proceed with the copyright application as proposed, you may do so only after consulting with and obtaining the consent of the former client, as required by Rule 1.6.
The Committee also notes the apparent applicability of Rule 1.15, regarding safekeeping of property. Copyright protection subsists as soon as a work is "fixed in any tangible medium of expression." 17 U.S.C. §201. A work is "fixed" as soon as it is proposed. 17 U.S.C. §201. In addition, 17 U.S.C. §201, entitled "Ownership of copyright" provides, in pertinent part:
(a) Initial Ownership. - Copyright. In a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of copyright in the work.
(b) Work made for hire. - In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
The Committee assumes from your Inquiry that the concept in question was "unique and original" and, therefore, copyrightable. Your Inquiry acknowledges that the work was done by you as an associate, under the supervision of a partner, on behalf of a client. You also acknowledge that the work was, in fact, "for hire." Based upon the foregoing, it would seem that any copyright in the work is already either the property of the firm and/or the client. The decision of whether to publish a copyrightable work is the decision of the copyright proprietor, in this case, your firm or the client. Unless, and until published, the work is, therefore, both property of and a confidence of the firm, or perhaps of the client. Rule 1.15 provides, in pertinent part:
(a) A lawyer shall hold property of clients or third persons that is in a lawyer's possession in connection with a representation separate from the lawyer's own property. Funds shall be kept in a separate account maintained in the state where the lawyer's office is situated or elsewhere with the consent of the client or third person. Other property shall be identified as such and appropriately safeguarded....
(b) Upon receiving funds or other property in which a client or a third person has an interest, a lawyer shall promptly notify the client or third person. Except as stated in this Rule or otherwise permitted by law or by agreement with the client, a lawyer shall promptly deliver to the client or third person any funds or other property that the client or third person is entitled to receive and, upon request by the client or third person, shall promptly render a full accounting regarding such property. (emphasis supplied).
While Rule 1.15 is generally directed at the retention by an attorney of a client's funds or other tangible property, the Rule is broadly drafted and, in the opinion of the Committee, is not intended to be limited to the safeguarding of monies. Since the work in question is likely to be considered intellectual property of your client, you would appear to have an independent duty to "safeguard" that property by maintaining it unpublished and, if it is published, by publishing it in the name of the author. As mentioned above, the "employer or other person" for whom a work for him is proposed is the author. Again, pursuant to the provisions of Rule 1.15(b), it is the Committee's opinion that an appropriate course of action would be to notify your client of your intent to seek copyright registration.
Finally, the Committee notes that if you propose to file a copyright registration application for the work in question in your own name, rather than as a work for hire, you would acquire an ownership interest in the work which was adverse to the former client. In this connection, the Committee believes that Rules 1.8(c) (l)-(3) and 1.4 may be applicable and notes that disclosure to, consultation with and written consent of the former client would appear to be required.
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