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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.
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.
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.)
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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
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.
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.
"You see your honor, according to slashdot comments modded to 3 and above, 98% of posters believe the plantiff has no rights to our intellectual property. The other 2% believed this was somehow related to a beowolf cluster of Natalie Portmans."
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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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