6. Appendix 1 - Control of Government Owned Information

Suggested Boilerplate Clauses

The following are suggested boilerplate clauses for Government contracts, the purpose of which is to enable Government agencies to retain control of information provided by outside contracting parties. These clauses are intended for use in situations in which the Government will be the owner of the relevant information. They are not intended to apply where a Government agency obtains a licence to use information, as opposed to ownership of/copyright in it.

It appears necessary to have two clauses. The first clause (entitled Exclusive Control of Information) is intended for use in fairly simple contracts where, for example, a Government agency has commissioned a specific piece of work (whether it be written, audio or visual). The second clause (entitled Ownership and Intellectual Property Rights) amalgamates the substance of the first clause into a broader intellectual property rights clause. This latter kind of clause may be more appropriate for higher value and/or more complex transactions, where potentially wider-ranging intellectual property rights are at stake.

The starting point in both clauses is a contractual prohibition on digital rights restrictions. The second clause allows an exception if permission is specifically given by the contracting Government agency. This ought to ensure that any restrictions imposed on specific items of information are the subject of discrete consideration. It would be the contracting agency’s responsibility, when determining whether to permit a given restriction, to consider compliance with TC/DRM policy 3 ('any DRM encumbrance applied to the government's master copy of any information it owns, must be under the government's full and exclusive control').

The appropriateness of either clause will depend on a particular contract’s subject-matter and, as is usual with boilerplate clauses, the clauses may need to be modified to accommodate the particular features of the given agreement.

EXCLUSIVE CONTROL OF INFORMATION

1.1 Subject to any specific qualifications in this Agreement to the contrary, all title to and property (including all intellectual property rights) in Information supplied by [Supplier] to [Government agency] under or in connection with this Agreement shall be the property of [Government agency].

1.2 Without limitation to clause 1.1 above, no digital rights restrictions shall be applied to or embedded within that Information. Such restrictions include, without limitation, restrictions on [Government agency’s] ability, either on receipt of the Information or at any time in the future, to save, copy, archive, view, print, [listen to], forward or otherwise distribute the Information.

1.3 Any permission under clause 1.2 above shall specify the particular type of permitted restriction and its duration.

1.4 Information means [all materials, documentation, data and information, in whatever format and of whatever type of media] [to be completed if necessary by reference to the subject-matter/information under the agreement that the Government agency will own].

OWNERSHIP AND INTELLECTUAL PROPERTY RIGHTS

1.1 Subject to clause 1.7, all title to and property (including all Intellectual Property Rights) in any thing or process supplied by [Supplier], its agents and/or permitted subcontractors under the Agreement(s), including but not limited to software, hardware and Information produced or obtained in any manner whatsoever in performing the [Services] (collectively, “Things and Processes”), shall be the property of [Government agency].

1.2 Ownership of all Things and Processes (including all Intellectual Property Rights that subsist therein) shall vest in [Government agency] at the time when such Things and Processes come into existence. [Government agency] grants [Supplier] a non-exclusive and revocable licence to use all Things and Processes to the extent necessary to enable [Supplier] to perform its obligations under the Agreement(s).

1.3 Without limitation to clause 1.1 above, no digital rights restrictions shall be applied to or embedded within the Information referred to in clause 1.1 unless specifically permitted in advance and in writing by [Government agency]. Such restrictions include, without limitation, restrictions on [Government agency’s] ability, either on receipt of the Information or at any time in the future, to save, copy, archive, view, print, [listen to], forward or otherwise distribute the Information. Any permission under this clause 1.3 shall specify the particular type of permitted restriction and its duration

1.4 Intellectual Property Rights means all intellectual property rights, title to, and interests (including common law rights and interests) in any jurisdiction including, without limitation:

• patents, trade marks, service marks, copyright, registered designs, trade names, domain names, symbols and logos;
• patent applications and applications to register trade marks, service marks and designs; and
• tools, techniques, computer programme code, specifications, rights in circuit layouts, ideas, concepts, materials, documentation, know-how, data, inventions, discoveries, developments, trade secrets, information and logical sequences (whether or not reduced to writing or other machine or human readable form).

1.5 Information means [all materials, documentation, data and information, in whatever format and of whatever type of media [to be completed if necessary by reference to the subject-matter/information under the agreement that the Government agency will own].

1.6 All materials, documentation, data and information (including all Intellectual Property Rights subsisting therein) supplied by [Government agency], or derived from information supplied by [Government agency] shall remain the property of [Government agency]. [Government agency] grants [Supplier] a non-exclusive and revocable licence to use such materials, documentation, data and information to the extent necessary to enable the [Supplier] to perform its obligations under the Agreement(s).

1.7 Nothing in this clause 1 shall operate to transfer the Intellectual Property Rights in any pre-existing software, materials, documentation, data and information of the [Supplier] that become incorporated in any Thing or Process supplied by [Supplier] under the Agreement(s). [Supplier] grants [Government agency] a non-exclusive, perpetual, non-revocable and royalty free licence to use (including but not limited to accessing, reading, copying, modifying, adapting, displaying and sublicensing) all of the Intellectual Property that existed prior to the commencement of the Agreement(s) and that is supplied by [Supplier] in performing its obligations under the Agreement(s). For the purpose of this clause, “pre-existing” means existing prior to the date of the Agreement(s).

1.8 [Supplier] acknowledges that it has obtained all necessary rights and licenses:

1. to supply any Thing and/or Process (including but not limited to any Intellectual Property Rights subsisting therein) supplied by [Supplier], its agents and/or permitted subcontractors under the Agreement(s); and
2. on behalf of [Government agency], for [Government agency] to use (including but not limited to accessing, reading, copying, modifying, adapting and displaying) any Thing or Process (including but not limited to any Intellectual Property Rights subsisting therein) supplied by [Supplier], its agents and/or permitted subcontractors under the Agreement(s).

1.9 [Supplier] undertakes (at its own expense) upon request, to execute confirmatory documentation, and do all things as may be reasonably required, for the purpose of confirming [Government agency’s] ownership of any Thing or Process (including but not limited to any Intellectual Property subsisting therein) supplied by [Supplier] under the Agreement(s) or to ensure that no digital rights restrictions are applied to any Information.

1.10 Nothing in this clause 1 will prevent either party from using techniques, ideas and know-how gained during the performance of the Agreement(s) in furtherance of its normal business, to the extent that this does not involve a disclosure of information in breach of clause [ ] (Confidentiality) or an infringement of any Intellectual Property Right.

1.11 For the avoidance of doubt, the rights vested in and granted to [Government agency] under this clause are vested in and granted to her Majesty the Queen in right of the Government of New Zealand, including all government departments.