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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?"
Please note, when it comes to contracts, nothing beats seeking professional legal advice.
So naturally, it gets posted here.
Hire an IP lawyer.
Have you considered consulting a lawyer? That's where I would start.
No sig
This is a really important subject topic, especially given the case of the guy that was sued for an idea in his own and head and lost.
... not contracts. If you have to ask, call a lawyer.
Game... blouses.
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.
Write the code at home and release it under the GPL license. Then go back into work and use that code. Also, please share with the rest of us.
drug tests. Some companies are so strict that you don't even own your own P.
I don't know WHAT i would do if it weren't for all the quality, personalized legal advice you can get FOR FREE, just by reading slashdot.
it's a blue bright blue Saturday hey hey
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
THe important points in this are:
1)All copyrights for any source code, computer programs, scripts, etc written by you stay with you.
2)Company has a license in perpetuity to use, alter, and distribute them internally.
That way you keep the code, and the company gets the right to use and alter the code, a fair agreement. But for the love of god, get a lawyer to write the actual contract.
I still have more fans than freaks. WTF is wrong with you people?
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!
So, here is my question of unexpected consequences. On every job, the code I wrote was the companies, and i was happy with that. The reason was that the company would be liable for any consequences of the code, and I would not have to worry about the code after I left. The flip side is that I could not use the code I wrote, but i could always rewrite if I had to. So, is there any legitimate worry about liability in this situation? Is ownership what one is looking for, or merely a license? Is it better for the company to license from you, of you from the company? This goes beyond the company doesn't own unrelated code i wrote in my own time' to 'I own the code the company uses and paid for me to write'. This seems kind of dangerous to all parties.
"She's a scientist and a lesbian. She's not going to let it slide." Orphan Black
Am I the only one who thought this was going to be about some guy who wanted to own his own IP address?
rooooar
"All your code is belong to me."
Get a lawyer. But google up some reading first and maybe even find some boilerplate to get a starting point. Get familiar with the real world issues surrounding employee/employer IP and make a list of nagging questions.
Lawyers tend to get overly expensive when you walk in and just say "I need a contract for abc" which leads to a lot of back and forth. You need to be integral to the process and do lots of homework. After all, if you end up in court, the paper is only worth what it's printed on if the basis for your mutual understanding was not well thought out and comprehensive.
$0.02.
See if you can sneak in some stuff like ip address and a sub-domain so you can fuck them up when they export your job to india ;)
"In a time of universal deceit - telling the truth is a revolutionary act." - George Orwell
Sample Draft:
....
Narrator: In A.D. 2005, contract was beginning.
Boss: What happen ?
Flunky: Somebody set up us the contract experation.
Flunky2: We get contract.
Boss: What !
Flunky2: Main screen turn on.
Boss: It's you !!
You: How are you gentlemen !!
You: All my IP are belong to us.
You: You are on the way to signing.
Boss: What you say !!
You: You have no chance to back out make your time.
You: Ha Ha Ha Ha
Flunky2: Boss !!
Boss: Take off every 'Lawyer'!!
Flunky2: You know what you doing.
Boss: Move 'IP'.
Boss: For great justice.
DYWYPI?
Take a normal contract ... and put a "NOT!" after each sentence that sounds like it's somehow restricting your rights. Then, at the very end, put "etc. etc. etc.".
I would have a meeting with the boss, the legal staff, and the primary stakeholders.
I would bring to the table a small portable grill, some marshmallows, chocolate, and graham crackers.
Then, when everyone was enjoying their s'mores, I would suggest linking hands and singing "Kumbaya."
You can't talk about Wikipedia's flaws on Wikipedia
Yes, I am an IP lawyer. However, you will find that any amount you spend getting an IP attorney who represents YOUR interests to draft an enforceable contract will pay for itself many times over just with the prevention of headaches and disputes. You are lucky to work at a company that will allow you to retain ownership in the IP you create. Keep in mind that you have no way of knowing with 100% certainty what the value of IP you create in the future will be. Best to make a small investment now in case there is a potentially large payoff later.
Laws affecting technology will always be bad until enough techies become lawyers.
Chances are that if you get to 'legally correct', you will prompt the other side that they need a lawyer, too. Under those circumstances you may find that the company lawyer has enough objections that you end up without your code (or contract if that's your choice). If the company is small, you may just scare them off altogether.
I agree, you should consult an attorney (probably labor atty before IP atty), but if the contract is truly informal all the way around (you and company) then take the advice, but don't destroy the spirit of the informality... unless you feel it's the only way to accomplish your goal.
Keep in mind, too, that you should probably address the company's competitors and how you would treat them if they approached you for anything that could be even construed as business sensitive. If your employer gets to the lawyer phase, this will almost surely come up.
Cheers!
SCB
So far I have read 30 replies talking about hiring a lawyer. Lawyers are really expensive if you didn't know already, and may not be worth the cost.
Do a little math before you shell out tons of money. Somet things to consider first are:
1) How much do you expect the code to be worth? Is it just some code you want to use on some projects of your own as a hobbie, or are you planning on turning it into a multi-million dollar piece of software?
2) What are the chances that your boss will know what you have done, care what you have done, and try to sue you for it, even though you have some sort of document worked out that states that you own the code? Sure everyone says nobody can be trusted, and that bad things happen, but give me a break. Does everyone honestly think that every mom and pop place will try to steal your code back from you, after they verbally conscented to let you have it, and even signed and agreed to some verson of a written contract?
I am tired of everyone telling me to hire lawyers. I have done many things myself, and there have been no problems at all. I have probably saved hundreds of thousands of dollars on legal fees. Think of legal fees as insurance. Buy it only for the projects that you think really really deserve it.
If you want to get mathematical, you can use the formula below:
(Potential Value of Software) * (Percantage Chance of Software Being Worth That Much / 100) * (Percentage Chance your boss will try to take it from you / 100) * (Percentage Chance he/she will succeed, despite a general agreement stating the contrary / 100). Compare that number with legal fee costs. You'll find it isnt always worth it. Sometimes it is.
But just because a lawyer didn't right it, doesnt mean it wont stand up.
If you need a lawyer for trivial everday stuff like selling (or retaining) your work, you live in a country with a fucked-up legal system. As far as I can tell, most judges are fairly good at interpreting contracts fairly. Moreover, the chance that you will end up in court about this seems pretty miniscule.
Going to a lawyer might be safer. It might also complicate stuff so much that your company does not want to deal with it any more ("He got a lawyer, so now we need to get one, too...").
Stephan
Two jobs ago, my boss told me to get my company business cards ordered. I asked him "What title should I put on 'em?" He said "I don't care, whatever you want." I picked "Master of the Devices". He wasn't amused.
There is no God, and Dirac is his prophet.
Don't forget access to your code sitting on their hardware. Protecting your copyright won't be of much use if the only copy of your code is sitting on their machines and you aren't allowed near them and your network account was cancelled 5 minutes after you were terminated. Or, if the company attempts to nullify the contract on the grounds that you illegally removed or copied code on their machines.
Don't assume today's friendliness will be there tomorrow. Treat it as a potentially adversarial relationship, even if it isn't.
Determine if the existing terms of your employment might override any contract, giving your employer the ability to argue in court that the arrangement was never valid.
Of course, get a lawyer. If the potential gain from protecting your rights isn't enough to pay for an attorney, maybe you ought not to bother.
-- Slashdot: When Public Access TV Says "No"
You might consider how you want to "own" the code. If you just want to be able to use it, modify, take to your next job, etc. the easiest thing to do is for the company to open source the code and not worry about the contracts. Consider it a form of shared ownership. This allows you to use it, them to use, and helps everyone. If you plan to make money off of it, well then then often the company wants a slice of the pie since it was done on company time.
given a situation at my current company from a while back, where a consultant came in to write some code, clear ownership was not established up front, and when we found a more profitable use for the code, he demanded more money, claiming he wound enforce his copyright to stop us. our lawyer agreed with him. we paid him to do work, and we still didn't own it because we didn't have a clear writing that said we owned copyright of all his work for us. i'm guessing that since you've not signed anything like that, you're in the same boat.
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
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. - mikeOwning an IP in a company is not at all a problem. Procedure:
....
:p
1. locate your sys admin
2. bribe him with beer/ whiskey/ chocolate fish
3. have your MAC address ready
4. your own static IP
5.
6. profit
Oh, we are talking about another type of IP here
Forget step 1,3,4,5,6 then.
In dealing with a contractual issue, I heard/learned that the party writing the contract is under a higher burden of proof because, presumably, they had the most understanding of the arrangement and if they failed to put something in the contract, well...screw 'em.
You might want to put the burden back on the other guy. He may know this. Although, IMHO, if they don't care, and you're a sysadmin seeking to keep IP rights over shell scripts, it's probably not important.
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.
For me it was a 1-page email from the owner. It said, basically, "For the following list of properties, all copyrights will vest in me directly, not in the company, and I will grant the company an unlimited, non-exclusive license to use them, duplicate them and create derivative works for no additional compensation. For this other list of things, the copyrights will vest in the company and the company grants and will grant me an unlimited non-exclusive right to use them, duplicate them and create derivative works for no additional compensation."
Worked great. When I eventually left, I walked away with rights to some fine network management and email software that I'm using in my current job.
One simple thing to watch for as you write your contract: You can't grant any rights to an intellectual property that does not exist. Thus for anything where the copyright will vest in the company, they can't pre-grant you rights; they can only agree to grant you rights later once it exists. Make sure the contract explicitly says that because a pre-grant statement is void; a court will not and can not read it to mean that they agreed to grant those rights later. Even if you never follow through and get them to sign the rights over, the agreement to do so will make it impossible for them to sue -- which is just as good.
Also note that unless you're a W2 employee, all copyrights automatically vest in you anyway and remain your property until you explicitly sign them over. There are a few exceptions to this rule, but "I signed a contract which says..." is not one of them. If you do your own witholding, you're better off just keeping your mouth shut and letting them think whatever they want. The IP is yours.
Moderating "-1, Disagree" is simple censorship. Have the guts to post your opinion.
That falls under a decent backup policy. Remember, the guy's a sysadmin, so he presumably knows enough to keep a copy of his work offsite, like at home.
Asking the employer to grant him post-termination access is unreasonable. Sure, lots of people get asked to do consulting duty after leaving a job, but you don't know beforehand what the relationship will be.
Raise your children as if you were teaching them to raise your grandchildren, because you are.
First tip: don't hire a lawyer at all.
There are many, many reasons to keep lawyers out of it but these are the ones that come to mind:
1. With all due respect, given where you are in your career you haven't the funds to pay some non-technical, blood-sucker $400/hr to fill your head with vague answers for months while running up a huge tab and in the end doing everything he can to get you to settle out of court. Sometimes lawyers are necessary- this isn't one of those times (please read on).
2. If you have only been spending time recently writing this code there cannot be that much of it. What I would do is write a separate document hilighting each class and method that has been written- create an interface specification document that includes a simple sentence on each class and each method and the signature (input/output parameters) for each. Don't rewrite the code yet, just create the skeleton document. Your goal here is NOT to steal proprietary information (and if this is a general web site there isn't going to be anything that's rocket science (no offense intended)). I would bet dollars to doughnuts if you went back and looked at some of that code today you could think of some great ways to re-write it to make it more re-usable.
In most production environments too much time is given to fixing code when an investment in design up front would have solved many many problems down the line. Once you have the aforementioned interface specification document take it home and write the BETTER code on your home machine, on your own time. This way you aren't using company time or property and since you haven't signed a contract with them they don't currently own the work you do on your own time.
As an aside, most large companies do make their empoloyees sign harshly crafted intellectual property aggreements that favor the employer. I ALWAYS read these carefully and add an addendum that clearly states I own what I create on my own time that has nothing to do with the company's line of business and I give specific examples of the product areas I'm currently researching.
3. By letting this thing go- giving the company the rights to this (small) specific code you are fostering good will with them in the long term. Almost no one works for the same company their whole life anymore. You will want good references from these guys when you leave them for the next big thing. After you have honed your skills for a couple of years you will come to see you are being paid 15% or more below what you could get if you moved on to another comapany-- it almost always works that way because companies figure it's too much of a pain for you to leave. You will have to decide if the environment fosters / supports your doing enough development work at home for you to pursue a dream of true independence or if you should leave for another company. Either way you'll want the good reference of some of the people you work with so don't burn the bridges by hiring a lawyer at this juncture. If you do it quickly becomes a you-versus-them environment and they won't likely consider you for advancement if they believe you aren't a team player.
4. The fact that you realized you bring something of value to the table is fantastic. Congrats on that. Now hone those skills and begin to build some reusable class libraries you will own and can license out to whoever wants to pay for it. If your next employer isn't interested in buying the use of your libraries, contract to them for an hourly rate and charge the hours it took you to develop that same code whenever it appears fitting to slip stream parts of it into their efforts. Along the way you will also learn the art of negotiation- ways of helping clients feel more comfortable that you and careful integration of parts of your code can help them better serve their customers.
5. Take with a grain of salt any writing that espouses open source. It might seem like a cheery, kum-bai-ya thing to do when you are in your early twenties. But when you're
Cogito Ergo Sum
I was working for a government contractor, and I wrote two programs for the Naval Aviation Depot in Jacksonville, Florida. Normally the government puts in the contracts that they own all of the source code for the programs, but it wasn't in this contract. Not even implied. Also, the contracting company I worked for refused to take posession of the source code because they didn't operate that way. To make a long story short, I ended up the sole owner of the source code for both applications. I was told this by my company's lawyer, by the way.
Normally, when you work for a company, you sign a form that states any software you create for the company becomes the property of said company. Make sure you read the contract and even get legal advice before assuming you own it.
No matter where you go... there you are.
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.
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.
Signature omitted in order to save space. Thanks for your understanding.
Here's ours. I designed it to be the fair contract that I always wanted when I worked for others. It's enough to put into writing the basic promisses to which both sides always agree. It basically amounts to the company owning the code, and the programmer being able to use the parts they've written to do anything without restricting the company from using the code forever. It's one legal sized page. http://www.holophrasticenterprises.com/participati on.html