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?"

Comments

So naturally...

[Anonymous Coward]

Please note, when it comes to contracts, nothing beats seeking professional legal advice.

So naturally, it gets posted here.

Re:So naturally...

[Pharmboy]

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.

Re:So naturally...

[techno-vampire]

No, it shows that we geeks know enough about legal stuff to know that it's as much a specialty as system administration, kernel coding or database design. For each of those you get a specialist. In this case, the appropriate specialist is a lawyer.

Easy

[knoebelsPT]

Hire an IP lawyer.

Can't say what I'd put in a contract, but...

[macshune]

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.

Re:Can't say what I'd put in a contract, but...

[Zak3056]

No. This is what happens when the judge (Judge Henderson) is a Texas Republican; a corporate whore.

Actually, this is what happens when our constitution becomes a watered down piece of meaningless paper. The 7th Amendment is unambiguous:

In suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise reexamined in any court of the United States, than according to the rules of the common law.

The 2nd, 4th, 5th, and 6th are in a similar state--being redefined out of existance as we speak. The 9th and 10th are long dead.

Even the 1st amendment is dying--and, ironically, it is doing so partially at the hands of the ACLU which believes that when it comes to religion, the establishment clause is far more important than the "free exercise thereof." The government is doing its own share, though... the right to assembly no longer has any real meaning (see "first amendment zones.")

Our Republic is doomed and, sadly, I see the end coming sooner rather than later.

You write code

[lewp]

... not contracts. If you have to ask, call a lawyer.

Just some basics

[Ahnteis]

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.

And...

[tktk]

drug tests. Some companies are so strict that you don't even own your own P.

Keeps me comin' back

[quokkapox]

You know, despite all the frequent dupes and microsoft mashing here, there's one thing that keeps me coming back again and again.

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.

I second this!

[Karma_fucker_sucker]

Do Not pass Go!

Go directly to IP Lawyer!

This is VERY important. I will lay ALL of my karma on this! GO TO AN IP LAWYer!!!!!!!!!!!!!!!!!!

Re:I second this!

[iocat]

Hiring a lawyer will scare him. You may want to hire a lawyer to help you draft a plain english agreement, but don't tell him you did so. Basically you need something that says:

"I grant an unrevocable, perpetual license for Company X to do whatever it wants with the stuff I write, and I also retain a license to any code I write, specifically, the shell scripts and whatnots, not the actual company data which remains company owned obviously. If I leave, I can take my tools and technology, and any upgrades, with me, but the company retains a copy which it can do anything it wants with."

We've done similar deals with contractors; they are pretty simple. It doesn't at all sound like your boss is trying to screw you (on the contrary, he sounds pretty cool!), so plain english is fine IMHO. IANAL blah blah blah.

(Actually since you are an employee, the contract should probably read "Company X gives me an unrevocable, perpetual license to any tools and technology which I create, specially shell scripts and whatnot, but specifically excluding any proprietary or non proprietary company data such as blah blah blah. If I leave, I get a copy of all the crap I wrote, blah blah blah.")

Re:I second this!

[dindi]

"Hiring a lawyer will scare him."

I have to disagree. If they want a contract at all, getting a lawyer's advice is a good thing.

I worked many times "on verbal agreement" which on the other hand can be bad (especially when you end up doing something you were hired for - e.g they figure out that you speak languages, so you "help" with customers and similar).

Besides the lawyer: put it into the agreement what you are supposed to do!
As a sysadmin I ended up doing "under the belt" jobs many times that did not fit my qualification and was not in my contract. As a programmer you probably aren't in big danger on that field, but sysadmins can easily end up doing cabling in rather bad places or doing stuff that is maybe OK for the "summer intern" but not a qualified professional.

More simply said: put it in there what you are not willing to do on a regular basis or not at all.

Most important for a sysadmin: restrict your private phone number from customers, you do not want to be on 24hours call (probably).

Re:I second this!

[Jah-Wren Ryel]

Besides the lawyer: put it into the agreement what you are supposed to do!
As a sysadmin I ended up doing "under the belt" jobs many times that did not fit my qualification and was not in my contract.

Talk about not in your contract!

What's under the belt, stays under the belt. All my clients keep their pants on, or I leave the room.

Keep copyrights, give them a license

[AuMatar]

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.

IEEE USA's sample consulting agreement

[Anonymous Coward]

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.

You do not own it

[Un pobre guey]

AFAIK (IANAL), in the State of California it is considered "work done for hire" and belongs to the company. If you are an outside contractor, you may be able to specify ownership beforehand. If you don't, it's work done for hire and belongs to your employer. Worse, if you invent stuff at home of the same kind as what you do at work during the day, it also belongs to your employer. If you use the laptop they provide, it's a done deal.

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!

AYB

[dcapel]

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.

Re:IANAL

[soft_guy]

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.

What I would do

[Stanistani]

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 may NOT want to hire a lawyer.

[dracocat]

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.

Don't get a lawyer (unless you want to)!

[Stephan Schulz]

In contrast to what everybody else has written, I would not go to a lawyer for such a trivial thing (and yes, I have negotiated contracts about my IP with both my employer and the company that bought a license for it). Just state clearly that the software you write is yours, and that the company gets whatever license they need.

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...").

Don't Forget Access To Code...And More

[reallocate]

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.

I Ended Up Owning My Own IP

[DoctorPepper]

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.

Similar for me

[mcrbids]

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.