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Beta-Testers and Intellectual Property?
cozimek asks: "I've got a question I'm sure many other Slashdot users have dealt with. My startup has been starting programming development with testing from our beta-clients. One of these clients, however, has begun discussing intellectual property rights. They believe that they deserve rights to parts of our software because they have helped give us advice through the development process. We think we own it all, and that they should be happy to have our services, tailored to their needs, for free. Has anyone dealt with these issues? Has anyone created a beta-tester contract?" As with all such issues, the devil is in the details...particularly the contractual ones. If you've had such issues before, from either side, please let us know how things turned out.
I'm not sure what kind of contract you had your beta testers sign when they agreed to do the testing, but I'm sure it specified clearly that not only is your IP confidential, but that it is strictly your IP and they have no rights to it. Since they willingly agreed to these terms, there is no real argument for them here.
Even in the absence of that though, since you (or your company) created the IP, you intrinsically own it. No one else, either a tester or otherwise, has any legal claim to your code.
In case of fire, do not use elevator. Use water!
We are not lawyers. What on earth goes through someone's mind when they go "Hm, my company has a legal problem, I should go ask slashdot!"?
Paying for legal counsel is part of the costs of running a company, and you get what you pay for.
You missed the boat in not having a lawyer draw up a contract for beta testers. Don't screw up again by not having a lawyer deal with someone trying to claim rights to your property.
If you're company intends to be an ongoing business they must retain a law firm. This is a question for Ask Lawyer, not Ask Slashdot.
Not that I'm trying to be a jerk or anything. I just don't think when you are dragged in to court that having asked the slashdot crowd what to do will be of much help to you.
Call a lawyer. Just do it. If you don't have a lawyer, what are you doing in charge of a company? How could you have started beta testing without an EULA? This clearly isn't free software, otherwise you wouldn't have to 'beta test' it, you'd just release, revise, repeat.
Nonfree software requires EULAs, sorry, but that's the only way to avoid little messes like this. Just call a lawyer, explain the situation, get him to resolve the situation. Otherwise you're gonna end up having to go with the results of an 'ask slashdot', which is never pretty.
[o]_O
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Don't get confused by the main page comment count. I think it doesn't take the foe modifier into account or something.
Oh and this works for the logged in people only.
The owls are not what they seem
Yes, those are amazingly-harsh terms. If we didn't have them we would be screwed. Every major company has those terms for a reason. If you don't like those terms, don't beta test.
For the record, we've never had to sic our barely-paid lawyers at anyone. Yet.
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Federal Copyright Law has some fall back provisions which come into play absent a written expression. Regardless, you:
1) should have a written agreement that covers this issue and
2) you should not accept copyrightable contributions from third parties without a written agreement.
-Andrew
It depends what kind of IP you're talking about. As we all know, you don't have to have a coded implementation of a software concept in order to get a patent on it. As long as you can describe it to the level of detail required by a coder of ordinary skill to pick it up and make it real, you've "enabled" the invention in the eyes of the PTO. Any actual code conforming to your software spec is considered to be merely an embodiment of your invention, and not the invention itself. Coders do not win the pissing contest at the PTO.
It's true that you don't own the patentable invention unless you file it at the PTO, but the company to whom you provided the fix can't (legally) claim it in a patent, because you're the inventor in the eyes of the PTO. Of course, if you agreed to assign your rights to any IP before doing the beta test, that's a whole nother story.
Maybe you are smarter than the rest of us, but aren't many jobs about what you are speaking, that which is problem solving?
;-)
I think you are missing the original poster's point. Problem solving involves more than just pointing out that there is a problem. In order to solve a problem, as the phrase "problem solving" implies, you need to have a solution.
Ok. Two things: First, it is standard procedure to put in a clause of your click-wrap agreement that says that all suggestions, improvements, etc. are owned by the software developer. See the Microsoft EULA for details.
Second, unless you have a NDA with them where you cannot disclose what they say... you are probably just fine. There are two cases: (a) what they have contributed is patentable, in this case they have one year to file the patent; (b) what they have contributed is copyrightable. In case (a), I wouldn't worry about this as most companies won't go through the expense; and (b) make sure that you have a clean-room implementation of it so that you don't violate the copyright.
In any case.. you need a lawyer. And, in the future, you may want to pay $$$ for beta-testing so that your testing results can be considered a "work-for-hire". I AM NOT A LAWYER, THIS IS JUST MY EXPERIENCE WHICH MAY NOT REFLECT YOUR PARTICULAR LEGAL ENVIRONMENT.
Best,
Clark
First of all, any contracts that you signed will affect the relationship between you. You can get IP transfers, define the parties relationships (e.g. consultant providing work for hire), etc. You need to work up a contract for anyone who has access to your IP, period. And, as everyone is saying, this is important - go pay an attorney to go on the record giving you advice. What I'm saying here is not the kind of advice you should have your company rely on.
... then there is more ground for considering them an inventor in that particular aspect of the software (if their suggestions are implemented). You can try to get around it by saying their suggestions are obvious extensions of your original invention, but if it was so obvious (the argument goes), then why didn't you have it in there in the first place?
Outside of any contracts:
If you are talking about getting patents on this software, then your invention is defined by the eventual claims in your patent. Only the inventor can apply for a patent, so anything that someone else came up with is not fair game for your claims.
If the betas pointed out bugs and difficult areas in your interface, then they really aren't inventing anything. They haven't materially added to the invention, they have no new and useful material, they haven't implemented improvements or changes. This kind of beta feedback probably doesn't warrant them claiming inventor status.
If the betas suggested improvements to the interface, like additional sections, a better way to implement a section, or an additional functionality of your software
Remember, though, that if you don't claim the features on which the betas are/could be considered co-inventors, then they aren't part of your IP. And they aren't inventors, with the attendant use rights, of the other parts of your software, even if they are inventors of a piece of it. Also, if your company and the betas are co-inventors on the pieces, then you all have similar rights to it, and they may not be able to prevent you from using it.
Basically, you really need to figure out what the beta has done, get an attorney to help you charactarize it, and then figure out what to do from there. Without looking at the specifics, no one here can give you the kind of advice you need.
You want a lawyer that specializes in - - IP law - -.
I can recommend one that I have used once (I have no financial interest in this firm) in looking into patent issues.
I used Woodbridge Associates in Princeton, NJ. (There is contact info. at : http://www.njiplaw.com/
)
My guess is that they have no claim. Unless you and they signed agreements transferring rights to them. But, you need a lawyer...
Sam Nitzberg
sam@iamsam.com
http://www.iamsam.com
I think that there are some good points made here, but I feel that a interesting aspect of this situation is being ignored. We seem to be focused largely on the legal aspects of the situation and what exactly constitutes IP. These are important considerations, but another aspect (or at least the one I am more accustomed to dealing with) is how IP contributions are a part of the negotiated price that a product is sold for.
For example, we developed a product for a customer during which they made significant contributions to the feature set that was included in the product. There were of course differences as to what the degree of their contributions were(they of course felt it was larger than we did, and vice versa), but there was certainly no attempt to deny on our part that their contribution had been significant. Of course, we argue this to them as an advantage of what we did: you get a product that is customized to your needs, so why should you pay any less for it, etc. Their retort is that they made it a better product not just for themselves, but for our other customers as well.
I believe this was a valid point on their part, and their desire to realize something for this contribution seemed fair to me. What it ended up being was essentially a discount off of what the cost of the product was. The particulars of what the exact discount was, were, of course, contested, but everyone agreed on the principle behind it.
So, I don't know about the legal particulars of any of this(except of course for the contractual ones that were negotiated), but it seems to me that whatever the law says, if the customer has made your product a better one, then it is not unreasonable on their part to demand something in return. At the same time, this is just one small piece in the negotiations puzzle. We for example were more willing to recognize their contributions since being a small company with few customers, they had a greater degree of leverage over us than say if they were dealing with Oracle. In that situation, the most you might ask for is that they implement your suggestion and don't raise your prices.
Any thoughts on this? Similar situations?
John
It could be a process or calculation that doesn't work or takes too long. The customer could suggest a better way to perform the work. If they do so, and it's a significant improvement to the product, then maybe there is some clam for IP ownership. But for me it'd have to be something that was non trivial and required genuine thought, and not something that the devloper would naturally have fixed in the process of finishing the product.
Perhaps the company providing the software doesn't have the expertise or experience in the specific problem domain to understand the problem as well as their customers. For example, suppose the fix requires a financial formula developed by analists working for the customer and which is not public knowledge. By providing that fix without compensation may not be in the best interest of the customer, as it may help it's competitors.
Assuming that customer is right, which they're not, then the vendor should get a cut of increased net profit resulting from the use of the software. Ask them what they think of that.
I've worked as a vendor, and as a consumer for a large hospital. The beta-testing is a symbiotic relationship. The user gets free, advanced release software and the ability to offer input on product development, and the vendor gets testing by real users in real situations, thereby increasing product quality, which is what both groups want.
At my current job, we are effectively a beta tester. We pay for the software, but we get it first, they listen to our input, and we get preferential treatment. That they listen to our input is obvious from the latest product release. During the implementation of this product, we found where there was A LOT of waste and undercharging for our services occurring. Does the vendor get a cut of those savings? Hell no!
Instead of wasting your time with a bunch of techie's opinions go see a lawyer and get an expert opinion - This is a legal issue after all.
In the realm of patents, you have no rights unless you are an "inventor." The test for inventorship is stated in the Manual of Patent Examining Procedure (available at The United States Patent & Trademark Office website) in section 2137.01:
"The definition for inventorship can be simply stated" 'The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor . . . .Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993. One must contribute to the conception to be an inventor."
The rights of corporations to have inventions assigned derives from the fact that they pay inventors to invent for them. Thus, unless your beta testers contributed to the conception of part of the invention, they are not inventors and have no rights. "[O]ne who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a coinventor." Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982).
Copyright is different. Where patents protect functionality, copyright protects the expression. Thus, while you may copyright source code, someone else may write different code to accomplish the exact same result without infringing on your copyrights. However, for a beta tester to have rights in this area, they would have to contribute code (source or object).
Generally, beta testers are compensated for their effors through reduced license fees for the finished product (or even free copies). However, this is usually done before allowing someone to be a beta tester. Depending on the details on the situation, it may be well worth your while to consult an attorney who specializes in IP issues. The typical patent infringement battle, depending on the complexity of the technology and claims asserted, can run well in excess of $500,000. Fees in the multi-million dollar range are not out of the ordinary.
Laws affecting technology will always be bad until enough techies become lawyers.
- Programmers, software designers, UI designers, software engineers, etc. Yes, some of them are better than others, but most products are not so complex that you can't find lots of people willing and able to develop them.
- Business people and managers with the vision and persistence to create and stick with the product.
- Customers that provide lots of feedback and suggestions for enhancements.
Of those, for any good product, the customers are going to do most of the design and drive the evolution of the product.We're building a huge intranet tool, and that tool has some very cool org charts it can generate. At one brainstorming session, a person was throwing out ideas and then capped his suggestions with "of course, this is all my own IP, so I retain rights to all of it." Since we're thinking that this might someday become Open Source, asserting his IP was unacceptable.
Our solution? We immediately asked him to leave the meeting, took him off the invitations to future brainstorming sessions, and contacted our lawyers. I am VERY glad we kicked him out of the process within minutes of him spouting off about his IP. If he had stayed, we may have had to rebuild or drop basically anything he talked about. Now we can at least say that we're clean-rooming it.
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