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Owning Your Own IP at a Company?
An anonymous reader asks: "I work as Sys Admin for a sporting company, and I'm the only 'Computer Guy' there. Recently I've been doing a lot of work writing code for their webpage and other related areas, and since I was up for contract renewal I raised the question of Intellectual Property. Now, in the contract there is a section which says that computer records/lists and such belong to the company (ie player registrations and other semi-sensitive data), but beyond that my manager was quite happy for me to own the code that I've written. Neither of us is very good with writing contracts, so he said 'Draft a document and get back to me'. Now what sort of stuff should I put in it?" This is a situation many of us may hopefully find ourselves in. For those of you who have been through this before, how did you end up structuring your contacts? Please note, when it comes to contracts, nothing beats seeking professional legal advice.
"I want it to express that there is an amicable agreement between us, that I own my code (including miscellany like shell scripts) and that they can keep using my code, in the normal fashion, after I've left the company. Is there anyone else who's in a similar situation? How did you write your contracts?"
Hire an IP lawyer.
Have you considered consulting a lawyer? That's where I would start.
No sig
I'm not an experienced contract writer, but I'd make sure you have the basics covered:
Company has rights to use, and modify code for company use.
You have rights to use, modify, and **sell** code.
You may want to grant the company rights to sell the code also depending on the situation, but I assume you want to keep the rights to the code to be able to resell it as a general solution.
dunno if parent was a joke or not... (IANAL) in my experience with some other contracts i paid to have looked over by an attorney, i learned that if there's a question, ambiguity, or unclear phrase or clause, the court will find against the person who drafted the thing.
Go directly to IP Lawyer!
This is VERY important. I will lay ALL of my karma on this! GO TO AN IP LAWYer!!!!!!!!!!!!!!!!!!
Evil people don't think they're evil. - George Lucas, Making of Ep III
Check out the IEEE USA's sample consulting agreement at http://www.ieeeusa.org/business/library.asp>. You will find two approaches to dealing with intellectual property issues. One way the consultant retains all rights and delivers a license, and the other way, the consultant delivers all rights but retains a license.
However, if write code at home that does things that are clearly unrelated to what you do at work, the code is yours, unless you commit the mistake of using materials and resources provided to you by your employer, such as the laptop.
DO NOT reach a conclusion based on what you read in this thread! You must get competent legal advice and/or get conclusive information from your state government!
As a second year law student I do have some advice to offer. Gratuitous promises generally aren't enforceable at law, even when the promise is on a piece of paper prefaced with "Contract". You want to make it appear as though the right to keep the intellectual property is in return for something. For example, you could state that your company is giving you the intellectual property rights as a bonus for some new service you will be providing the company. Unless restrictions of your initial work contract dictate otherwise, this is probably an enforceable modification to the original terms of the contract. Make the contract modification short in order to avoid ambiguity, and make sure your boss has the authority to give you the rights to your IP. Make sure it's signed, dated, and you're good to go. I haven't studied intellectual property law per se, so I don't know if there are any additional requirements to a contract modification such as the one you're proposing, but more likely than not it'll be enforceable even if it's written on the back of a McDonald's napkin.
My boss does the same thing, I own my own code, and we have an understanding that it doesn't get sold to anyone, or released in it's current configuration, but I can reuse the code in other projects of my own.
This is part of the reason I was up at 5am this morning, trying to learn some new stuff, because I get a benefit out of the overtime as well. Also, I have used code from personal projects in our business applications, so it works both ways. If anything I used at work suddenly became company property, I wouldn't use by best code that I wrote at home. I would instead waste time rewriting it at work, in a lesser way, so it's in the bosses best interest sometimes to be open about it.
Keep in mind, we are a relatively small company and I've been there over 10 years. I don't program full time, so we are not talking about a million of lines of code here. But it sounds like a similar situtation. We do not have a contract regarding code, which may sound crazy, but code isn't what we do for a living, we just have to write our own apps to support our unique sales methods.
Tequila: It's not just for breakfast anymore!
That is actually the "standard" behavior in most US states unless you have an employment contract to the contrary, though typically your employer will automatically gain "shop rights" to the code as well.
IANAL, but I have had experience with litigation.
Write down what you want the contract to do in plain English. A list is fine.
See if the IEEE has a sample contract that looks close to what you want. If so, modify it, if not, look for a Nolo Press contract that looks close to what you want.
Now, find an attorney that specializes in ip law.
Show the attorney your draft contract, and your description that you wrote in plain English.
This should minimize your legal expenses and maximize your chances of getting what you want.
Work bio at MMWD
the company when it comes to signing away copyright. So it doesn't matter what he thinks.
You're walking onto some dangerous turf. Ignore the BS here; see the company owners and a lawyer.
i'm a law student at franklin pierce law center in NH, and am currently working as a student attorney at out IP & Transaction Clinic (where we provide free legal services). if you are interested, then check out http://ipmall.info/news_activities/concomlawclinic .asp and contact us. we might be able to help you out...
If you are in the US and a true W-2 employee, it is actually unclear the best way to do this, because: (i) by operation of law, the work is probably Work Made for Hire; and (ii) because of (i), your employer is deemed to be the *author* of the copyright in the work. In this case, in an odd twist, the best way to handle it is probably to either GPL or open source it, or assign the copyright back to you. Making an agreement that tries to retroactively modify who is deemed to be the author (such as backdating it) may not work. This problem arises because you already created a work of authorship.
If you are a US 1099 independent contractor, you are already the author and owner of the copyright in the code (which explains my comment at the top).
If the code involves a potentially patentable idea, the rules are completely different. Unless you were "hired to invent" (and from the post, you were not), even if you are a US W-2 employee, you are the inventor and there is no implied duty to assign the patent; the best the company has is a shop right (limited internal license). Hence, again, my comment at the top.
If your employer truly is this generous (or potentially this dumb), when I am counsel for the employee, I usually ask the employer's counsel to draft the agreement, if they are competent - this costs less.
The posts about determining value and risk are good advice - if this is just ASP or scripting of hacked together GPL code (indeed, if it contains GPL code or derivatives) and is not really a true application - you do not need a lawyer and are probably better off without even an agreement in writing.
If, however, this is a valuable code and it will matter down the line who owns it and who has a license, and the scope of that license, *good* lawyers will save you the $'s in the end.
I practice and teach in this area. The answer is never that you should *always* hire a lawyer, or never hire a lawyer. But I can tell you that if value presents itself later and proper agreements are not in place, you will either abandon the code or spend much more fixing the problems.
To put it in terms of a computer analogy - I still write software code/scripts for may non profits and simple sites - and we do not do formal agreements; but if there is any significant commercial issue, I hire a professional programmer/developer or real techie. The trick is knowing when the issue is serious enough to call on a professional.
If you want to do it yourself, I often recommend starting at Lawguru. - mikeNot if it's not being distributed in the first place, but used for an internal project. He won't be required to release squat. Besides, do you think he's going to come down on himself for violating the GPL on a project HE owns in the first place, especially considering being the copyright holder he can choose to modify or issue alternate licenses at will?
Buy the book "Legal Care For Your Software", published by Nolo Press
If you are intelligent enough to write computer software, you are probably intelligent enough to write a simple legal contract, especially when you can cut-and-paste most of it from examples in the book. I've been writing my own IP contracts for years, never had a bit of legal trouble so far, and don't expect any in the future. I think if you read the book you will find it is not as hard as a lot of people make it sound. I am not a laywer, and honestly, I doubt you need one.
Your post may or may not be correct. If he is an employee, the employer likely owns the copyright, if he is an independant contractor, they may not. Then again, even if he thinks he's an IC he may not be as far as the law is concerned. If the submitter (or anyone else) is serious about protecting his rights, he really should talk to a lawyer.
Si vis pacem, para bellum
The only thing more annoying than a Libertarian is an (un|mis)informed Libertarian
As an independent consultant/programmer/software engineer, I've made it a policy for YEARS that I do not work under circumstances where I don't own the resulting code.
I have my lawyer (hint hint!) draw up contracts such that I own the code, and the client(s) receive a transferrable, unlimited-use license to use/update the software. (I usually provide sources)
Generally, how I get clients to agree to this is: "A large part of my worth on this project is all the tools, functions, and pre-existing code from other projects that I'll be using in your project. I ask in return that pieces of the software I write for you can be used in other projects.".
If they balk at that, I ask them if they're willing to see the cost of the project triple as I re-write all this stuff from previous projects. I stress that they will be given generous licenses to the software that won't inhibit their use of the software. I generally agree to a non-compete clause in the contract when the client asks for it, though I have my lawyer draft it so it's not draconian.
I've never had anybody want to pay 3x as much, and I end up owning full copyrights to the sources for everything I write, and have for years.
I have no problem with your religion until you decide it's reason to deprive others of the truth.
Ummm... actually, if there is any kind of ambiguious language that can be reasonably interpretted more than one way, it is considered to have been the responsibilty of the contract-writer to make the contract unambiguous, and generally the interpretation of the non-contract-writer will carry more weight... once again, assuming it's a reasonable interpretation.
:P
No, I am NOT a lawyer, but I have 3 software companies and have paid a crap-load of legal fees.
$0.02 (CDN)
I agree with previous posts, talking with a lawyer to define your position is not necessarily a bad thing. Since you do not want to "spook" or taint your amicable relationship, your employer does not need to know that a lawyer has advised you.
Whatever agreement you come up with, simpler is better. The more words you put into it, you increase the chances for loopholes and confusion and other nasties to creep in.
I work for a small company the develops software that is sold as product as well as develops software for other companies. Our standard contract/license states that what we had when we started the development is ours and stays ours. Code developed on their nickel falls into one of three cases. Case 1: They pay lots of money to own the developed code outright and to retain all/exclusive rights to it. They can sell it, share it, give it away. It's theirs. Case 2: They pay not quite so much money and have unlimited irrevocable rights to use the code internally, but they cannot sell it, share it, or give it away. We have rights to use and sell the code, but may agree to not sell the code to specific identified competitors of theirs. Case 3: We own the code outright, and they simply have a license to use it. They get no source code, and their right of use typically isn't transferable (that is, they cannot transfer their license to another party even if they erase it from their machines). Your situation most likely falls into case 2, especially if you used parts of the codebase that you own for the software you delivered to them.
If you do not consult a lawyer before drafting your agreement, remember to keep whatever you write simple. If you are not a lawyer, don't try to talk or write one. Use straighforward language and write down exactly what you feel is fair. The key point is to end up with an agreement that you and your employer understand and find mutually acceptable. As our attorney has lectured us - contracts are what you end up falling back to when you can't agree on what was said. Any competent judge will first try to determine what the core understanding was supposed to be before diving into the verbage of a contract.
If you are an employee, your employer owns the work unless you have a written agreement that waives the employer's rights. If you are a contractor, you own the work unless you waive the rights.
IANAL, but I can RTFL.
Excerpts from Title 17 USC follow.
A "work made for hire" is--
(1) a work prepared by an employee within the scope of his or her employment;
(b) Works Made for Hire.--In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
Signature omitted in order to save space. Thanks for your understanding.