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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.
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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.
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
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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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
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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