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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.
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
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!
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?
Before you go and visit your attorney, I would do the following:
1. Make a list of the issues you would like to cover. What do you want the contract to say?
2. Take a swag at writing the contract. Write up something that just states the things in the list.
Then visit your attorney and take this stuff with you. Tell him/her that you want him to turn this into a contract and also advise you on any issues you might have missed.
Avoid Missing Ball for High Score
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
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"
I actually am going through the same issue right now with a company I am a partial investor in. It so happens I earned my share of stock by writing the backend database and client programs (desktop and web apps). Naturally, some of the code really doesn't have a thing to do with the company itself, however some of the code is by its nature tainted by the IP of the company.
Basically I wrote up a 3 or 4 page document that stated to the effect that:
In my case, the company's internal software development is an ongoing project, so I had to specify some provisions for code auditing to help ensure that code that falls under either of these 2 categories can be verified to contain no company IP or backdoors or whatever in order to satisfy the other shareholders, but thats no big deal to me.
I took the document to a corporate lawyer and he said its all good. The terms are clear and because I am not offically employed by the company, there is no preexisting company policy or signed employment contracts that would supercede this agreement. Note that in many cases the fine print in the employment contract you sign with your employer reserves all rights of the product of your labor to the company, no room for negotiation. The exception is when you are an independant contractor in which case you typically have a little bargaining power.
The thing I never did really get cleared up was a hypothetical question I had -- What if I did the same work (no pay, stock only remember), but there was no documented quid pro quo stating this bunch of code is property of XYZ company in exchange for X percentage of stock? It would make sense the code I've written that does not contain company IP would legally default to being my property under copyright law, but what about the code that contains company IP? I suppose it would probably be illegal to distribute the code in any way, but would I technically have to let the company use the code?
One of the other investors thinks the code would automatically become property of the company (because it contains company IP), but I don't necessarily agree. Any desktop lawyers wanna take a stab?
What could possibly hurt the security of the American people more than giving our own government the ability to hide its
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.