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.

Comments

Not unless they suggest improvements

[IP, Daily]

You don't own IP because you pointed out a problem; you have to suggest a solution.

Re:Not unless they suggest improvements

[I Want GNU!]

Oh? Since when don't I own IP of things I point out? You don't need to completely solve the problem to own your own IP. 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 firmly believe that everyone owns the rights to their own IP, things that they think of and have in writing. Now, the only question is if they use it for good or evil. Information wants to be free, but you can't go stealing other information from people and claiming "but oh! they didn't tell me how to code the problem fix!" Sorry to point this out, but I felt it had to be said.

Re:Not unless they suggest improvements

[ackthpt]

Even suggesting is pretty shaky, I mean, I could suggest you allow users to hit Escape and drop focus on a certain control, but actually coding it makes it real. I could suggest Slashdot change the meta-moderation system to include the context of moderation (not that this deserves +1 anything, but that it got +1 in the right category, i.e., does the moderator know how to actually moderate), but short of me trucking down to the USPTO and and requesting a patent on this feature, forget it, it's not mine.

IMHO the client is elbowing for some negotiating room later, i.e. we helped you get the bugs out, give us a better pricing. If they're expecting a cut of the pie, tell them thanks but no thanks and drop them as a tester. That sort of weasel mindedness belies something worse is behind it.

Re:Not unless they suggest improvements

[IP, Daily]

Well, the "P" in IP stands for "property". If you are provided with a beta version of software, and your contribution is to point out a bug, well fine, you own the property rights to the bug, congratulations. Wait a minute, the bug was already there, you only noted it. Therefore, you don't own the bug either.

If, in addition to pointing out the bug, you provide a solution, then yeah, you own the rights to implementation of the solution. Assuminng of course that you didn't first sign a beta-reviewer contract in which you agreed to assign all IP rights.

Can you say "Non-disclosure Agreement"

[dcorbin]

IANAL, If you didn't get have an NDA signed in advance, your basically screwed.

David Corbin

Ideas are (almost) Worthless

[iansmith]

I don't know about the legal issues, but from long experience in programming and knowing writers and other artists, an idea is only 1% of what is needed for any kind of product. The other 99% is a person or group with the skills and drive to make it a reality.

Ideas are a dime a dozen... everyone has an idea for a great game, TV show or book.. but how many people devote years of their life to actually make one happen?

Re:Ideas are (almost) Worthless

[ackthpt]

Ideas are a dime a dozen... everyone has an idea for a great game, TV show or book.. but how many people devote years of their life to actually make one happen?

Unfortunately, we've seen examples where someone comes out of the woodwork and sues for a stolen idea, after some large number of people and time have gone into bringing it to fruition.

On the other side of the coin, like the example of the weedwhacker, some little guy invented the thing and got robbed by big industry anyway.

Best to halt all work with the disputing party until everything is clear. If they don't want to benefit from the privilege of giving input into development of a product they use, I would drop them, particularly before lawyers show up.

Of the readership on slashdot, how many would love the opportunity to give constructive input to the design and development of games, utilities, movies, etc? Pretty much everyone, right? Before arriving at the quick answer how much thought did you put into 'hey, wait, then i'm a contributor and should get credit, money, babes, a cameo, etc.? Few, I betcha. Best to for would be beta tester and consultants to weigh their own expectations before involving themselves, not later. Much to messy when it come to later.

You don'/t owe them anything..

[L-Wave]

IANAL, but they are beta-TESTERS, they test the product, they have no need to look at the code. They are there for primarily the purpose of testing, if they had written code it could be debated, but how can they claim that they deserve to have the source, when they havent done anything but ran software your company created?

No experience, just an opinion

[way0utwest]

I've worked with some companies that had beta testers, but for a closed system (B2B) not shrink wrapped software. No one ever brought this up, but I'm not surprised. It's such a hot topic and so many people want to make a buck the easy way.

They may have an argument if they contributed a idea with substantial information about how to implement it. However, this might be hard to prove. If they suggested a feature and you implemented it without their assistance, I wouldn't think that they have any rights.

IMHO, the best bet would to have some sort of NDA that included a disclaimer of IP rights.

Copyright Law

[Anonymous Coward]

Well, under copyright law the copyright protections go to the author of the work under the law, automatically, unless there's some other agreement that supercedes it (like you working on a contract for another person). So if there's no agreement, and they're using software you wrote, they have no case. Rather, they have no intellectual property rights to it simply through providing you with a consulting service.

However, if they have a license to practise consulting, it's possible they could sue you for consulting fees, but that's got nothing to do with ownership of the software. The law says if you write it, it's yours automatically.

Re:Copyright Law

[Negadecimal]

The law says if you write it, it's yours automatically.

Not necessarily. Work done under commission is implicitly the property of the employer, not the employee. In the case of beta testing, a software company solicits advice from testers, "paying" them by not charging for use of their software.

And there's nothing illegal about a company using someone else's idea -- unless that idea is patented, copyrighted, or acknowledged as hands-off in a mutual NDA. We see this all the time.

As a software developer myself...

[Jason Levine]

I'd say they (the beta testers) don't own any portion of the IP rights. If a beta tester points out that doing X, Y, and Z will cause a crash, they're simply giving you feedback about your product. You're the one who comes up with a solution on how to fix it. Even if they give a way to fix it, they don't own the IP rights to that method. This is assuming that you control the source code 100%. If the code is freely available, someone submits some patched code, and you use it then all bets are off. To be on the safe side, you should probably have a disclaimer somewhere on the beta test site that states that all submissions become your property. Just to be on the safe side. (I tend to beta test my programs with a group of technically adept friends of mine, so I've never run into this. They're unlikely to demand rights to my program, they're just happy that I continue to develop it.)

Obvious answer

[gmhowell]

What did you say in the licensing agreement?

Barring that, here is what is ethical:

If a tester recommends a feature, they should be able to recommend that to anyone. If they mention a new way to do something, they can mention that to anyone. If they mention a new color scheme...

Basically, any ideas they have are their own, and they should be able to share them anywhere. The specific implementation, however, is your code. And unless you open it up in some way, it stays your code. Piss on them. (And this is spoken from someone who does a LOT more testing than programming.)

Tell them to lay off the bad drugs

[Mendax Veritas]

As usual, IANAL, but I think your clients are completely out to lunch unless they made some really significant contributions to your product and had a contract with you that stipulated that should have such rights. I agree completely with your view: they're getting your services for free, tailored to their needs, and that's more than enough.

If they actually contributed code to your software, or designed hardware components, then they may reasonably regret giving it to you for nothing, but if they gave you stuff with an understanding that it would be used in your product, without making it quite clear (preferably by contract) that they expected to be part-owners of the resulting product, then I don't see how they could possibly have an argument that could hold up in court.

Another question: is this a copyright or patent issue? For copyright, the implementation is all that matters, so if they didn't give you actual code or circuit diagrams that are present in your final product, then they have no basis to claim ownership. If patents are at issue, then it could be a little murkier.

*what* intellectual property?

[sethg]

Trademarks obviously don't apply in this case.

If they sent you emails with ideas about how to improve the program, then they might be able to argue for a copyright on those emails, but that doesn't give them any rights to code that you wrote to implement the ideas.

If the ideas they sent you are patentable, then why on earth did they disclose them to you before either filing a patent or signing an NDA?

IANAL, but either you left out some very significant details, or they're blowing smoke.

Enough historical precedent

[PhotoGuy]

Even if you never had a beta-tester contract with them (which would have been a good idea), I think there's enough historical precedent about the role of a beta tester that you're on pretty good ground.

It's unheard of for beta testers to obtain IP rights to what they're testing, so without a contract giving them such rights, I'd say the reasonable assumptions for both parties would be that there is no IP ownership promised to any beta tester.

I think they'd have a more difficult time in court proving that there *was* some reason for them to think they should have partial IP ownership, when the standard way of doing things clearly is not this way.

I'd either ignore them, and let them fade away, or hire a good IP lawyer, who probably wouldn't need to spend much time on the issue, sending them a one page letter outlining why their claims are baseless.

-me

What we did: 1: Beta license 2: smile benignly

[dbc]

At my former employer:

1. Beta license is different from product license and specifically addresses this issue. Testers do not get any IP rights. And among other stuff: License terminates at end of beta program. Beta issues need their own license terms -- look into it.

2. Customers that "need" to own IP rights more than they need to beta the product so that they can influence it through their feedback do not need to be part of the beta program. Find other testers. Smile benignly and tell them when the full product will be available, and of course thank them for their business.

Offer to license your code back to them

[duffbeer703]

If they'd like to own the whole software package, license the whole thing back to them at a healthy rate.

Redevelop the portions of software that they developed code to and write a EULA next time.

But we have knowledge of what's usual and customar

[coyote-san]

We're (mostly) not lawyers, but we DO have an idea of what's usual and customary in this field.

Here's a clue - if somebody says "hey, can my (boss|client|contractor|whoever) do this?" and we've seen the same situation play out a dozen times, always with the same results, we don't need a lawyer to predict the likely outcome of the latest incarnation.

Of course people should consult lawyers when there's any real question about a situation, but we aren't infants who need to run to a lawyer for every single damn question. E.g., I occasionally get "invoices" for things I never ordered and things of no possible interest to me. (E.g., a directory listing for my "gasoline station.") I don't need to pay a lawyer to learn that they're probably scams and it would be a waste of my time and money to pursue the matter.

Bottom line, IMO, is that the beta tester was way out of line in making the request. Unless the success of the company depends on their good will, I would have told them to get lost and not given it another thought unless they actually hired a lawyer to pursue their bogus claims. Checking with a lawyer would be a waste of time and money -- unless you really want to pay a few thousand dollars to learn that there is no precedence for such claims. (AFAIK - I have never heard of a successful claim despite almost 20 years in this field.)

Re:Ideas are (almost) Worthless -- wrong!

[Reality Master 101]

Here's an idea worth literally billions of dollars -- and I'm deadly serious. Feel free to use it if you wish.

Create a 100% compatible clone of Windows.

I guarantee if you pull it off, you will get an instant 10% of the market. If you're smart, you'll be able to grow it from there.

And there you go! A great idea. But there's that little thing about implementing the idea.

I can give you dozens of good ideas. But there is a lot of truth in, "if it were easy, everyone would do it".

screw the lawyers

[Eugene O'Neil]

I am so sick of people who think we should consult a lawyer about every little thing. "You say you want to go to the bathroom now? That is a very serious decision, with legal ramifications your puny little mind cannot possibly comprehend. You better ask a lawyer..." I cannot help suspect that many of the people who spout these opinions so frequently on slashdot are in fact lawyers themselves, trying desperately to increase our already dangerous over-reliance on their services.

My advice is, if you have a contract with these people, read the rules of the contract and obey them, whatever they may be. If you did not have a contract, or if they are asking for something that is clearly not specified in the contract, you don't owe them squat. I am not a lawyer, but I don't need to be a lawyer to tell you something this simple.

Yes, it happens often

[MrIcee]

I can't begin to tell you how many times something like this occurs. Companies who are helping to beta a program often sue over patent rights, claiming that their suggestions are in the code.

None of this stands up... ESPECIALLY if there is no contract. Often what we do is reward the beta tester with free/lower cost services... but we NEVER NEVER allow them rights to the software.

If you find this happening to you often, I suggest a simple non-disclosure agreement that must be signed before they can beta test. The agreement should spell out that (A) they can not disclose anything about the software and (B) beta testing does not give them any rights of ownership.

I'd also terminate the relationship with the company who is pursuing you, immediatly... and do not allow them back into your beta program.

Re:you got it backwards

[GileadGreene]

Customers provide requirements. Designers (by defininition) do the actual design. A customer may say "hey, this widget sucks, I'd find it much easier to use that one", but that's just redefining (or clarifying) their requirements. It's up to the designer to figure out how to make it work within the context of the rest of the system.

There is a clear legal answer on these facts . . .

[werdna]

It depends. Call a lawyer.

Clearly, it depends upon the exact facts of the commercial relationship between the developer and beta tester. It depends upon the specific nature of the advice and the circumstances under which they were given.

It depends upon so many things, that anyone who tells you the answer is clear on the outline provided is clearly just selling something. I *AM* a lawyer, and I am here to say this: that right now you need to stop asking general advices of the technical community and begin speaking to a competent lawyer upon whose advices you can reasonably rely.

This much is certain, these issues will ALWAYS be more expensive after they have exploded than beforehand. The time to call a lawyer was when beginning to distribute the software and disclose the object code to third parties.

Then, as now, there is only one answer to this question:

It depends. Call a lawyer.