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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.
IANAL, but my company got into a messy situation like this once before. Basically, if you don't have an explicit contract and you live in the US, you are screwed. The way the US copyright law is setup is that if you have an idea or something written down (such as in an email), you automatically have a copyright to it. You can still buy a copyright with the copyright office in order to prove it, but even without doing this you still have all rights to your Intellectual Property. It is really sad the way this works, but it is the law, so we must face it. So, I recommend either giving them the appropriate share of profits, or moving to Europe. :-) Simple as that, even if you made it. Sad, huh?
We just started beta testing our product. Our beta testers have to sign a 15 page document that states, among other things, that they do not own the rights to any features or improvements they suggest. Of course signing any sort of agreement is disincintive so we offer our product free to them once we release.
Last I checked, if someone patches my (source freely available) code, they've created a derived work, and I retain the copyright. Assuming that their patch can't stand alone as a separate work, it's legally mine.
You must not be a patent lawyer!
In patent law, it's the idea that matters. Those who help reduce an invention to practice are almost never given legal credit as "inventors".
A suggestion is not enough, the person would have to do actual work - ideas cannot be copyrighted. The implementation of those ideas, however, can be. So if your beta tester says, "Yeah there's a problem here," that's not enough. If s/he says, "There's a problem here, you might want to try this," still not enough. If s/he says, "Here's a problem, I wrote up some code to fix it for you," and you *use* the code, you've got a problem.
This is not the greatest sig in the world, no. This is just a tribute.
You've got a more basic problem if you ever give code to someone for evaluation without getting him/her to sign an agreement 1) acknowledging your ownership of the IP in the beta version provided and 2) agreeing to assign all IP rights in any fixes provided to you.
Also, the "you might want to try this" answer might be enough. If that solution can be conveyed in block diagram form that is detailed enough for an average programmer to reduce to code that works, the PTO considers this to be a "software invention". Coding is not required to patent a software invention.
I was beta testing a piece of equipment. Made an off the cuff remark about another (not thought of) use for it with a minor modification. The company did it, and made a fortune with it. THEN they had the balls to demand the prototype back (but I could get a finished one..at regular price of course!). I didn't bite.... I think if a beta tester does or suggests something that adds a significant value to the product, they should be compensated in some way. Otherwise, the company is stealing....
Correct. The NDA is not quite what is required. What is really required is a beta agreement where ownership of ideas and IP suggested by the testers is determined. If there is no beta agreement ideas and IP coming from the tester are still owned by the tester.
I suspect unless we are talking about large amounts and useful IP (independent of the product) it would be difficult to successfully win a court case but you are better covering your tracks with a beta agreement. I remember being involved in one project where the other company wanted to claim ownership of everything you think about while using/testing the product. This is a bit excessive but stresses the importance of such agreements.
If that's all they are doing then the solution is easy: End the beta testing program. Oh! Beta testers provide something useful to you or your company. I guess you need to come up with a solution for your beta testers that rewards them for their service to you.
Testing is important. I've worked for a company were the testing department (including the beta tester relationship with outside customers) was perceived by managment as important as the programming team and the marketing team. I've worked for another company where there was no SQA infrastructure at all and all the customers where unpaid beta testers. Guess which company produced better software?
If the dot com boom was still in effect (and I was working for a company that had stock options) I would love to be able to reward a beta tester with a couple of stock options or something.
The tester does in fact own the copyright on his bug reports (unless he has specifically signed it away). Those are his intellectual property.
But still, the developers aren't proposing to publish them or anything. They just want to act on the information contained therein. That's very different to exploiting them as works; and if there's no specific contract between the tester and the developers governing this use, he hasn't, by default, got a leg to stand on.
I have to say I can't see how it could be any other way. Imagine what would happen if passing on information automatically entitled you to a share in any profits arising from subsequent use of that information!? Teachers could sue their old pupils. Financial papers could sue their readers. Society simply couldn't function at all.
I've beta tested many time, and my contribution has gone far, far beyond "XYZ causes a crash". Your job isn't just to break the software, it's to give feedback, (G)UI approaches, suggestions, crazy ideas, in fact everything that happens in the app company before they actually started development. I've never even dreamt about trying to claim ownership over any of those ideas I contributed(many of which I've seen come to light), probably just because I'm not a major asshole like the beta tester that spawned this thread. Oh, I also had to sign a contract too :), but frankly most of it relates to my not revealing product information during the process.
As has been already mentioned:
ideas are not product, and
GET A LAWYER!
DT
It sounds like your customer is more than a beta tester. From you discussion it sounds like they may have had significant participation in the design of your software. Depending on what design information you customer supplied the customer could have a financial investment way in excess of what would be expected from a beta tester.
For example several years ago our firm received a suggestions for improvements document from one of our testers. The document was 350 pages long and contained very detailed information including algorithyms and screen designs for the enhancement. The customer had obiviously put considerable effort into the document. Our own development manager estimated that it would have taken in excess of $100,000 to produce such a document internally. Our firm thought this made such a significant contribution to product improvement that we compensated the customer with free licenses for two years.
One of my favorite quotes is from Samuel R Delaney, the SF writer. I don't recall it exactly, but it deals with this issue. He talks of people suggesting story ideas to him and feeling they should share credit. He felt it was like saying to a boxer, "I've got a great idea of somebody you should fight" then expecting to share in the purse.
The idea is just about worthless. It's the execution of the idea that has value.
Igor
If you're hiring them to test your product, then any work they do is considered work-for-hire, and is thus owned by your company. (similar to RIAA and it's artists - http://www.wallacecollins.com/workforhire.html)
If they're doing it for free, then that might not apply...
Regardless, they're just testing what you did. Their reimbursment is the money you pay them up-front... If they want a piece of the product then that would have to be negotiated up front.
IANAL! This type of situation might be avoided by employment contracts. As part of the employment contract at the company I work for includes a section regarding intellectual property. Basically it states that all efforts and ideas expended towards the company's products, projects, etc. are owned by the company -- NOT the contributor. If you don't sign the contract, you aren't hired.
I would warn you, however, that I am not licensed to practice law in any state (drunk or sober).
Chris Beckenbach