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Screwed Over IP Rights By Your Employer?
VirtualUK asks: "Prior to joining my company, that I've been working with for over a year now, I signed an 'Inventions & IP Rights' contract. That contract stated that the work that I had been carrying out off (and was planning to continue with) of my own back, and in my own time and was my own. At the time the work I was carrying out for the new company and my projects at home were completely separate, however I could see that the company was heading in the area I was working on. Wanting to ensure that everything was kept honest, I reminded them of the work that I am doing and wanted to ensure them that I was not stealing anything from them. What was the response? Basically, that the 'Inventions & IP Rights' contract that I signed didn't count for squat, that they owned anything that had vaguely anything to do with the problem space they were concerned with, and that if I were to use my code in a public domain I could face retribution from the company in the future." When in a situation like this, go to your nearest IP Lawyer for a consultation. Companies that exhibit this behavior are not worth your time or your expertise. With that aside, how many of you have faced this situation? What did you do and how did things turn out?
"I feel sickened, I felt like I had been kicked in the guts, 18 months work for nothing? Not wanting to say the area I'm in, they pretty much said that if they wrote word processors and I made fonts in my spare time that they owned those fonts! I don't think so. So far my options I have considered are:
- Carry on working for the company, keep quiet about anything like this in the future and hope they don't try any funny business, but lose my vested stock options
- Leave the company, work for another company in a different problem space and carry on my work in my own time, hoping that my old company doesn't try to do any funny business, and lose my vested stock options.
- Try and get VC to go on this on my own, but in today's climate, that's hardly likely.
What's the killer is that I have a young family and so I have to ensure that I have an income at all times, but my gut tells me that this is the kick that I've needed to go it alone.
What are your opinions? Anyone know of any good IP Rights Lawyers?"
This sounds like a house painter shouldn't even remotely consider taking up watercolors as a hobby.
Programmers are professionals. Professionals must maintain and improve skills to survive. I don't know anybody who reasonably expects a professional programmer to not have computers at home because it might be a "conflict of interest." Bullshit.
I ran into a similar situtation with a Bioinformatics firm. They didn't like the distributed computing project in which I was involved, as they feared we would solve the protein folding problem, and then they wouldn't own it. Meanwhile, my job responsibilities would have had nothing to with protein folding, nor were they silly enough to throw venture capital at it, but since they were in "Bioinformatics", they couldn't stomach the idea of any employee having a hobby in even the same branch of science.
As a result, they lost out on my skills. But since I learned during the interview process that one of their top people honestly thinks computers will be able to simulate proteins accurately and comprehensively in 3-5 years, I'm pretty glad I said no. That's just nuts.
Whatever you do just make sure that your code isn't sitting anywhere on their machines whether it's just for convenient backup or any other reason. If it is, and especially if they have it on their backup tapes, your case will probably be a lot more difficult.
You want answers watch Jeopardy - you want miracles talk to God.
Seriously, talk to a lawyer.
Here's the opinion of an employer and a passionate software developer...
You're giving really lousy advice to a software person. When I interview developers, one of the best filtering criteria I've found for getting hard-working, passionate, motivated developers is to ask them what kind of projects they've got going in their spare time. I'm not looking for conflicts. I want to hear about something. I'd rather not hire the person that says "software is my 9-5 job; I don't dabble at home". I enjoy seeing someone's eyes light up and get all excited telling me details of some mad-scientist project they're brewing up (that will probably never be completed), etc. Hell, tell me about side projects that failed. What did you learn? That's the kind of employee I want. He's into tech. He loves it. He lives it. He'd be doing it anyways, even if it wasn't his profession. If the work I give him is boring from time to time, he doesn't feel like his job is the only outlet he's allowed for tech challenges or expression.
The most significant risk I've come across: People will work on their own projects on my time. Very possible. And yes, I've received legal and management advice that I complicate the employment relationship by hiring this type of person. That advice should be respected. In the end, it's a calculated risk. What's my upside as an employer? I get a hard-core developer that (hopefully) respects his employer for not stifling him. I've increased the chance that he's happy on the job. He may go so far as to refer his colleagues and friends. Gimme.
In the end, software development has a lot to do with growing, changing, techniques, lateral thinking, staying sharp. I can't offer challenges to everyone I hire on all those fronts. So I'm not going to stand in their way if they do it on the side. Issues can and have come up. But it's a net positive, so far.
He is competing. In business all is fair just ask MS. This is how businesses operate in this day and age no ethics, no morals, just profit and shareholder value. Just ask Firestone, Microsoft, Exxon, Nike etc.
War is necrophilia.
good point...
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Independant contracting can be great if ... you can get your customers to pay their bills. When I got out of college 16 years ago, I had a great job for 6 years. After that ended with the death of the founder, I've had terrible experiences with employers. For 10 years (will be next month), I've worked as a contractor for about 3/4 of the time. During that time, I spent more time collecting than I did working hourly on billable time. It's amazing how long it can take to get to the right person to talk to at a large telco about getting a check written. Add in travel time to go back and forth between Atlanta and Dallas (hq's of the two companies I've done the most work for) to try and collect and unpaid travel expenses, and I haven't made a dime profit of off them yet. Let's see, on the check I collected today, I did 78 hours of work at $165 per hour for a total of $12,870. I probably spent $700 on long distance (about 50% work, 50% collecting), and had over $6,000 worth of travel expenses that probably aren't going to be reimbursed. I finished the work 19 months ago. That leaves me with $6,170. Well, your probably thinking, that's not bad for a month of work, but it's depressing when you think of how long you have to wait to maybe get paid. I'd rather have $2,000 now rather than a chance "to win the jackpot" with a telco 1 1/2 years later. Contracting? Absolutly sucks unless you are lucky enough to find the right customers who will *pay* their bills.
First of all, there is the matter of juristiction. This is set in Scotland, where the laws are a wee bit different from USA.
Second, if a lawsuit were to happen, it would be us sueing him (our salary checks all bounced, which is why we left).
> Still amazed at the sleazy shit people try to get away with,
Yes, based solely on what I wrote above, my actions do look sleazy, but this was in the context of a company that wasn't paying taxes, wasn't paying suppliers, a director that was embezelling money, and clients literally in tears. In view of all this I thought I'd better make sure than when I left, I could salvage some code.
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When I (and all the other employees) resigned from the company simultaneously, I took absolutely everything. Seems I'd burried something about files that were o+r deep in my technobabble. This code came in handy when we immediately setup a company in direct competition to his.
Still laughing...
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The real issue, is not the rights, but how much are you willing to spend to enforce those rights.
You can wait for the employer to file suit, and then defend on the basis of prior disclosed work.
Talk with an IP lawyer now. Also, keep version control, or some sort of logs of when you did what.
You might want to license some of what you have done to them, if what you did would help your work. Put it in memos, "I did this X years ago on my own Y, do you me to go and find that code?"
Also, I used that attitude of theirs against MSI when the WC insurer claimed that my tendinitis was from my computing at home, not from my computing at work.
Fight Spammers!
but get ye to an attorney now. An IP attorney in particular. Have him evalutate the contract before you do anything else. I realize that this is a difficult time but unless you get a qualified opinion first, everything else is just bunk. No VC, even back in "the good old days", is going to invest in a company with legal action hanging over it's head. Most times I would advise people to work with their employer on sticky issues like this but it sounds like you're working for a bunch of dicks.
Responses, in no particular order...
1. Hogarth describes the death of open source software as people stop working on the "fun stuff" when the work day is done because of a fear of a conflict of interest
2. Only work in a job you hate otherwise you might be tempted to try something similar in your off time
3. If you can't convience your company to try a "crazy new idea" don't try and implement it yourself
4. Only lawyers can solve problems
I'd like to try a counter suggestion: Work for a company that values your intelligence, creativity, and motivation. Talk to friends, coworkers, ex-classmates and offer your services to the companies that have a reputation for fairness. I'm sure their are a couple of them out there: maybe a software engineer like yourself started a company for the express purpose of having a nice place to work. Maybe that means taking a slight pay cut. Maybe that means you don't get a foosball table in the break room.
Waltz, nymph, for quick jigs vex Bud.
IANAL, but ...
Have you been documenting your work as you proceed, with dates?
Get a lawyer to read over your IP agreement and see what he says about its validity and if it is valid, then I would simply quit, move to another job , and continue in your work, publish it in the public domain just as you had planned and if they come after you get yourself the same lawyer.
This will prove several things in the eyes of the court:
A) Due dilligence, you found a legal opinion as to whether something was valid, and even if it isn't, you sought a professional opinion which is often enough.
B) The dated documents prove that you had conceived of the items in your own time. And if it doesn't you can file a suit against them asking them to pay you for the time in which you conceived of the idea, 18 months = 540 days so 16 hrs * 540 days = 8640 hrs * (I'm guessing 40$) = $ 345600. They wanna claim the ideas are theirs than they should pay for them.
Anyway, just my $0.02.
Free long distance :) If you're paying $700 in phone bills you could probably get one of those 'super-biz-rate' plans for a $100/month or something
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You miss the point: the IP agreement was that the stuff was *HIS* and now the company says that they want it. If he's in a state with Ip agreements, then he's on solid ground. if he's not in a state with IP agreements, then the company has no right to the stuff anyway.
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So, if you work in California, you have additional rights. As long as your work is not in direct competition with your employeer or your work began before you knew your company was moving in that direction, you are probably safe.
Dave
P.S. IANAL, but I play one on the net...
With all due respect, bunk! This is like saying that you don't need a lawyer at a closing for the sale of real estate, because if you need a lawyer, the house itself is suspect. Or like saying that you don't need to enter into a contract ever, because if you are memorializing an agreement, it presumes a lack of trust that precludes entering into it.
This isn't a question of trust, its a question of knowing what your rights are --having a reasonable amount of information-- when you go to a negotiation.
The author of the question needed a lawyer. This wasn't a question of trust by any stretch of the imagination, any more than his asking the question of the Slashdot community indicated he didn't trust his employer -- it was a question of knowing where he stood.
I'm advising you not to do this unless you have alot of guts it's also illegal.
You have been at xyz firm for 18 months In internet time that's about 2-5 years of trust. It seems that you should have some High level contacts and access.
1) find out there human resource proceedure and storage system ( make sure you know how many copies there are )
2) raid your file for the documents you need
3) find the originals (ip documents), copy them, then trash them or copy them and take out your signature replace with the unsigned copies where ever there was a copy.
Unsigned copies are the best way because that can lead to clerical error ( whom gets the blame )
4) stand pat and wait 3 months
5) quit
Now I don't advise you to do this, but if you do their is your basic plan.
Now if you need an IP lawyer drop me an e-mail, I got about 3 that charge very nicely ( about 150 - 350 hr )
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I guess the reason why this subject comes up more and more frequently is the fact that we programers don't care about the details of such contracts until we are bitten by them.
You definitely are not a lawyer. A contract may be a contract, unless the courts decide otherwise.
The courts are free to say something is unreasonable, illegal, unenforceable or whatever. And they're quite enthusiastic about saying that sort of thing. Now, he's lucky that in most cases the courts say these sorts of things while siding with the employee, but he cannot assume he knows whether his contract is binding.
It's not even a question of breaking the contract. It's a matter of who owns the IP rights to some bit of code. Jeez, how did this get modded up? "Hey, he says what we would like to be the case, and mentions open source to boot."
Apparently they have good IP rights lawyers...
What you say!!
I would suggest striking out on your own, but I don't think this will make your problems go away. In fact, I bet it would just make them worse because then the company could say that the work you developed for your new self-owned business was actually theirs, and that you were in effect, stealing.
Let's see, here it is:
it is an Ask Slashdot article: "When Personal Projects Start To Conflict w/ Work?"
Not an exact repeat, but it seems pretty similar.
Okay, well I said my bit there, so I'll pass on this round.
"It is a greater offense to steal men's labor, than their clothes"
I have done this on employment contracts, leases, and rental agreements. I have been advised by a lawyer that if the other person accepts the modified contract and the transaction takes place, then it will hold up in court. I have never had to test it.
OpenSourcerers
To follow up on my own post... I was also told by the lawyer that the other person does not have to initial the changes. They are supposed to examine the returned contract before accepting it. YMMV.
OpenSourcerers
Documentation is key here. Make sure you have everything in writing, including the fact that they think they own your work. This doesn't sound like an IP issue, but more of a contract issue, since you both signed a legal document saying your privately-done work is owned by you.
First of all, in choice (a), why would you lose your vested stock options? In all the options agreements I've ever read, you will only lose them if you're terminated for cause. They can't take them from you otherwise.
Next, think of things this way: If you can't go with option (c) you're probably not going to get very far. You've pretty much said that you are not in a position to capitalize on what you've been developing, due to the risk involved (family, etc). So what are you losing? If the company starts working in your area, as long as they aren't STEALING what you did, you can certainly influence what they do and probably contribute to it. And, be happy that you're working on something you're interested in. It's not the end of the world! They are just in a better position to capitalize on it than you are.
Your options depend heavily on exactly *where* you live and work. If this is a US company, which state is it in? If it is CA, WA, or a few others, IP agreements are NULL AND VOID. Search the old Slashdot files for the last time this question was asked and follow the links in that discussion for a list of states which have laws preventing IP agreements from being enforceable. If you live in a country other than US or in a state with enforceable IP agreements, good luck! You will need it!
First, I'd write down _explicitly_ what you have been working on for the last few months, both on and off the job. Clearly state how there is no overlap, and how you took initiative to explore strange new worlds. Send this to your boss so that it is "on the record". If it goes to court, this will look good.
Second, Ask them to put in writing what they interpret the off-work clause to mean. If they don't want to explain their legal agreement, you are dealing with bullies -- leave immediately. Respectfully disagree in writing.
Third, ask your supervisor what the options are. There are a few I can think of: (a) Perhaps they can *purchase* the rights to your evening work, (b) You can make sure that your exposure within the company stays _far_ away from what your evening work is doing (refuse to go to meetings that would be a conflict of interest), (c) You should ask for a raise if they want you to work in the area you've been studying the last few months.
In general, companys are willing to work with you; the legal costs can be 10-60K to raise a law suit. So, as long as you're cheaper than that... you don't have a problem. Well. Hope this helps. -- Clark
Sneak in some GPL'd code and say "whoops how'd that get in there." (while simultaniously raising your pinky to the corner of your mouth)
Who at the company told you the contract was worthless? Managers often talk tough, particularly if they don't know the law. HR deals with legal issues in more depth, and if you talk to them, they may be more rational with regard to your contract.
With regard to just not saying anything, you may find yourself in a situation where you may be competing with your employer. I don't know if you signed a noncompete agreement, but that may become an issue.
If you are serious about continuing with your work, I would seek out a reputable lawyer (not the one on the corner in the mini-mall) in your area. One key to finding a reputable lawyer: don't go with one who wants to charge you just for finding out what you want him or her to di.
Well, it sounds to me like you have a couple of good contract based defenses. While IANAL just yet, and I haven't actually taken a look at your employment contract or the IP rights contract, you are probably alright, regardless of whether or not your company tries to bully you. Generally speaking, when a company tries to crush an employee on some ground like "he's stealing our trade secrets" (which often happens in cases like yours) courts are very employee-friendly. Based on what the contracts say, a court may severely curtail the scope of any provisions you signed regarding the company's ability to prevent you from practicing your particular profession, or it may simply find such a provision completely unenforceable. Here's a good quote from the New York Court of Appeals: "Therefore, no restrictions should fetter an employee's right to apply to his own best advantage the skills and knowledge acquired by the overall experience of his previous employment. This includes those techniques which are but skillful variations of the general processes known to the particular trade." (Reed Roberts Assoc. v. Strauman) This case dealt mainly with a company's attempt to stop an ex-employee from practicing in his field of expertise on some kind of "misappropriation of trade secrets" ground, which the court pretty much rejected. However, courts do sometimes enforce noncompetition agreements (i.e. I, employee, agree not to compete with employer for 12 months after I leave my job) if the terms are reasonable an don't unduly burden your ability to make a living in your chosen field. Basically, this really is less of an IP dispute than a labor law dispute. I suggest talking to an attorney and showing him exactly what you have signed and so on. Doesn't have to be an IP lawyer, though. This has less to do with patents, copyrights, and trademarks than with the terms and enforceability of the contracts you signed.
By this logic, Apple computer would never have come into existence. I know not all of you may consider this to be the gratest tragedy on the face of the Earth, but I think that this approach can safely be classified as A Bad Thing.
"There's one born every minute." - Steve Case
IANAL, but I know that in California any invention you produce on your own time without using your employer's facilities is yours. Unfortunately, not all states are uniform. My guess is that Texas probably lets employers claim your first born if it makes them money, while northern and western states are more restrictive on Nazi IP agreements.
"You done taken a wrong turn."
-Bill McKinney, in Deliverance
i've heard that before, that if you make a change to a contract, as long as both parties initial the changes, it's valid.
ianal...
this is just a placeholder till i send back my real sig from the future.
The IP section of the agreement from a previous employer basically stated everything you did was theirs. They specifically mentioned on your own time with your own equipment as still belonging to them. Bad stuff.
This company had know-little HR people go over the substantial amount of paperwork with you and a fellow cow-orker used this to his advantage. He simply wrote a huge X over that section and wrote his initials. The HR guy stated, "Hey! You can't do that!" to which he replied "Yes I can". I have no idea if it would ever stand up if contested, but I do beleive it removes this companies rights to his IP.
Standard disclaimer: IANAL, please consult your own legal counsel on these matters.
Aside from talking w/ an IP lawyer, ASAP, I suggest going back and taking a REALLY close look at anything else you've signed. Make sure you didn't screw yourself over inadvertantly. Check and see if they've gotten you through some other loophole. Who knows what they might have managed to slip by, elsewhere.
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-The Computer
Make sure that the lawyer you talk to is well versed in IP rights in your state.
Whether or not you signed a contract stating that your exiting IP is your property, it makes a difference whether or not your company ALSO signed the contract. Otherwise, it's just a document that states what your views were, and isn't an agreement since nobody representing your company signed it.
I have heard of a number of horror stories about IP being "stolen" by companies (and also by less than honest workers). However, neither of these types of cases are in the majority.
Most times, having your lawyer talk to theirs will get some agreement or settlement between the parties. It is is BOTH of your best interests. After all, a company that is seen by its employees as looking to screw its employees will eventually have zero employees working for it.
I wish you the best of luck.
--
"May I have ten thousand marbles, please?"
________
Does anyone actually have a Java program designed to control air traffic, or for the operation of a nuclear facility?
If you are an employee (rather than a contractor) and you have been employed for more than 12 months, then you could consider the current position to be one of constructive dismissal, and persue an Industrial Tribunal action aganst them.
I suspect that what you need first & foremost is a good employment lawyer, not an intellectual property lawyer. You need to determine first whether the IP contract does in fact form part of your contract of employment. Then second you need to determine whether it does in fact protect your work at home. And third, that there is not some other term of the IP contract or another section of your contract of employment which acts against the IP contract (e.g. covering noncompetitive actions on your part, &c).
As normal, unless you want to fight, then yes, you probably are screwed.
Meanwhile, if you do nothing else, document, document, document everything you can - including writing a narritive of the whole thing, against the possibility that they come after you assuming you do release your code.
Being young and with a family might make that painful, but you have to face facts -- your job at this company is finished. All you're doing right now is dancing on the grave.
My company attempted to get me to sign one of those IP agreements. There was a clause that said they owned anything "related in any way to work duties". My reply to them was that virtually anything I did with a computer could conceivably be related somehow to my work duties through enough mush-mouthed rationalizing, and I was not going to sign a contract with that clause. So I didn't. Now, if the company came back and said "You know, that program of yours that you did in your spare time on your own computer is ours," I'd politely inform them no, it's not. If they insist, well, it's time to go.
-E
Send mail here if you want to reach me.
I recently turned down a pretty decent job at a biotechnology company, who shall remain nameless because I don't owe them press one way or another, due to IP clauses in their non-disclosure and non-competition agreement. In the end, they would own anything that I was going to do on my own time if they decided that they wanted it. Additionally, I would have been strapped into this kind of agreement covering not only my own time but the stuff I was doing for a new employer for a year after I left or was fired. I decided to turn down the job because of the contract. I'll be honest and say that the cost of living in Boston didn't help, either.
I spoke to the corportate lawyer regarding the contract and my concerns about the clauses, and he brought up a good point. It is not cheap to bring a suit to court for breach of this kind of contract. He indicated that companies are unlikely to pursue something that isn't clear cut theft of their ideas. It is also trivial to convince yourself that any company teetering on the verge of start-up oblivion will grasp at anything potentially profitable to save them from financial doom. In the end it was a no-win situation for me because of the position it could have put me in.
Nobody will ever force you to sign one of these contracts, but I admit that I am addicted to having a roof over my head and food on the table. If one of these contracts were all that stood between me and I job that I needed to take for one reason or another, I would sign on the dotted line and bite my tounge. I suspect that many people would do the same. The only reason that these contracts are still around is because people do sign them for whatever reason. I suspect that many people don't even read them closely enough to understand what they really mean.
As long as you can convince your employer that your projects should be released under some GPL-like licence, and you get that code uploaded somewhere into the public before you leave, then no matter where you go from there you can reuse your code.
I'm not a lawyer, and I don't have any experience in this, so bear with me. The agreement you signed as part of your contract with company, and now they are telling you they will break that contract, so it's you who could sue them for breaking the contract. If you release your project as open source, It would be fairly easy to prove that you have not stolen code or ideas from them in any way. Also, if the contract doesn't have any ifs or buts about your home projects being your home projects, such as, if your projects are in the same area as the companies projects then the company gets your work, it's pretty clear to me that no matter what your boss says, your contract with them is valid as ever.
I quickly became jaded working as an employee. I found that companies always viewed me as a source of income for them, nothing more. I've never worked for a company that was loyal to me. So I'm loyal to only my family and friends. That's all. I switched to contracting as a way to make more money while getting some freedom. In my opinion, stock options, while they may get someone a fair amount of money once vested, are a risky way to go, especially in today's climate. Let's think about the math. In the five years it takes you to become vested, you could be making $50-$100 an hour as a contractor. If you live well below your means, you could put away $50,000 to $100,000 a year. In a good mutual fund over the same five years, you could do very well. And, you have control. You can leave when an environment goes bad without losing your investment in the vesting period. And you can incorporate. I have a young family also (4 kids and I'm 30), and I've missed less work as a contractor than as an employee. This is because I know when the end of the contract is and I can plan for it. As an employee, I would show up to work one day to find the company closed. It's not for everyone, but it's for me.
Disconnect your television. Do your own research. Draw your own conclusions. They're probably lying. Don't be a sheep.
In the US it probably is a Copyright issue, though it may be an employment issue as well when it coems to your agreement with them. (I hoep you kept a copy safely tucked away.)
In in the US, take heart in that the last revision of the US copyright law (1988 I believe) actually did a great deal to strengthen authors' rights in cases such as this.