Losing My Software Rights?

vintagepc writes "Having written a piece of software as part of my research employment, I now face (and will later face again, with other software I've developed), the issue of intellectual property rights. The legal department stated that if I was paid by the University to produce the software, the University would own all rights to it. This is supposedly black and white, not a gray area. However, I was hired as a research student, not directly by the University, and also via a research award (NSERC). Furthermore, it turns out that faculty members here, in fact, retain their intellectual rights to any software they write. At this point, I can still back out, since I have not explicitly agreed to the conditions, but this decision must be made soon. So, I turn to the Slashdot community to ask: Are they allowed to completely strip my rights to the software? If anyone has had any similar experiences, then what was the outcome? Additionally, is this a normal action, or do I have some maneuvering room?"

Comments

Normal

[BountyX]

According to NSERC no (NSERC Grant Award IP Policy) Specifically, "The Agencies do not retain or claim any ownership of, or exploitation rights to, intellectual property or copyright developed with grant funds. These rights are owned by the Institution and/or by the inventor." You need to check with policies you have in place with your institution. Many universities do claim IP and it is usually addressed in the student handbook, or somewhere in university policy. Look at stanford they own google's page rank patend.

Re:Normal

[eggnoglatte]

Just to add to that: NSERC specifically allows for universities to retain copyright of materials produced under NSERC grants. So yeah, if you take their money, the university can take your rights.

Even more than that, if the guy did any of his work under direct supervision of a faculty member or staff, the very fact that the supervisor was paid by the university while contributing time towards the project, allows the university to also claim at least part of the ownership.

don't do it

[sdxxx]

Yes they can take away all your rights to the software, but no you shouldn't allow them to do it.

First, I've been a grad student at one university and a professor at another, and I've always avoided signing these agreements. It turns out that if you just avoid signing them and aren't too confrontational about it, you can easily slip through the cracks.

Second, you should talk to your professors and see if they will allow you to develop software publicly under some irrevocable license like the GPL or BSD. With revision control software like git, it's pretty easy just to throw the repository on your home page and make everything you do available to the world (including yourself) on a royalty-free basis. Import some GPL-ed third-party code into your project for extra protection.

Finally, sometimes professors do try to exploit grad students for the purposes of launching their startup companies, etc. If you feel that you are going to be in a position where your research is compromised (for instance because your results are no longer reproducible by the community), then you should find another research group to work with!

Re:don't do it

[sdxxx]

Similarly, you'd better expect that the professor will go find another research assistant to work with.

I'm a professor, though not at a research institution. Here's what I would do if I were and hiring research assistants as bitchy as the poster...

"Want to be my research assistant? Then sign this. Yes, your work becomes my property." "Oh, don't like that? Why don't you go find another professor who is hemorrhaging grant money."

Seriously, why would I need, let alone want, to deal with some FNG with very little experience,
full of himself, fantasizing that he's got the next killer break-through rattling around his excuse for a brain pan?...

Well, I'm a professor at a research university, where most Ph.D. students are RAs (except while they TA or have outside fellowships). Several of my Ph.D. students have gone on to be professors at top-ranked universities, so I'm probably at least an okay advisor. So let me tell you that advising Ph.D. students is all about respecting them and their ideas and opinions. It's also about trying to instill good taste and values in students. I am shocked to see someone who claims to be professor have so much contempt for his or her students.

As for licensing software, I always explain to my students that they should make their projects free software to have the most impact. I discuss the options with my students, but generally let the lead student on a project select the particular license, ideally with rough consensus of all involved. So yes, even though the university might own their work, my students are free to continue using it and building on it in perpetuity.

It would be wrong for me to confiscate students' intellectual property--particularly if I tried to make them sign something saying their work belonged to me, as opposed to the university. Moreover, it would be setting a terrible example and instilling bad values in students. Finally, it would probably be illegal, because the university has policies in place to prevent the abuse of students.

Legal services

[Dzimas]

You're in Canada, right? There's a reasonable chance that your university has a law department. Visit and find someone there who can answer your question based on their expertise in IP and contract law. After all, you wouldn't ask Slashdotters about excising intramedullary spinal cord tumors, because most of us don't have a firm background in neurology. What makes you think we're any more qualified to provide a meaningful legal opinion in your jurisdiction?

Some basic guidelines...

[gillbates]

Of course, this is slashdot, and IANAL. But having a little experience, this is my take on things:

• The bad news: you probably cannot afford a legal battle with the University, especially if they're your sole source of income. Think about the worth of what you created: does it have a commercial application? Would a business sue for the rights? If not, even if you win a court case, you'll end up spending your lawyer's fees to retain the rights you already possessed in the first place.
• The good news: you might be able to convince the University to release your code under a GPL or BSD style license, especially if it has little or no commercial value.
• If you created the code on your own time, with your own equipment, for your own purposes, and have not signed any agreements to the contrary, you likely own the rights. However,
• If the code you created had a purpose specifically related to the work you were performing for the University, or
• If you relied on their equipment to produce the code, and/or
• If you produced the code during established working hours -
• then the University probably has a good legal claim to it.

If your creative duties were supervised by the University - that is, they told you what program to write, and how to write it, and your duties included writing code - your chances of winning a court case in your favor are very small.

Teachers and professors are in a different category because, generally speaking, they are not producing a "work for hire" - but are instead hired for their role as a teacher or lecturer. The University does not retain creative control over their work; does not proscribe what is produced; and does not require them to produce code as part of their duties. That is, the code is incidental to their work. Thus, they can often retain copyright of the code they produce.

From your description, this does not sound like the case at all. Instead, from your terse description, I, and a court, could reasonably conclude that you were hired to write code (among other duties), and hence, your employer owns the rights to it.

Unless you have a well-documented case to the contrary, it would be safest to assume your University's legal department is correct.

C A N A D A , eh?

[redelm]

NSERC sounds like a Canadian grant. It is beyond stupid to ask about law without mentioning jurisdiction, especially since most of the posters here are or at least will assume the United States. Most canuks are bright enough to point it out.

Canadian law is very different from US, particularly around work-for-hire and you really need to talk with a local legal-aid office or lawyer.

It's Called The Wolfram Clause

[ewhac]

Once upon a time, there was this brilliant guy named Stephen Wolfram. While working in the physics department of Caltech, he developed a program called SMP -- Symbolic Manipulation Program. Prior to that point, it was culturally understood that university research, and stuff developed pursuant to such research, belonged to the University, or to the public domain, so that it could be used by others to further the pursuit of knowledge.

Wolfram, however, had other ideas.

There was a protracted, expensive legal battle, in which Wolfram argued that -- despite the overt cultural backdrop of sharing knowledge -- since he didn't expressly sign his rights away, it was all his, and Caltech could go pound salt. It ended up with Wolfram resigning from the physics department and taking all his intellectual "property" rights with him.

And that's why, to this day, it costs $2500 to buy a copy of Mathematica. And also why that clause is in your contract with the University.

Schwab

Re:Guess what...

[Lumpy]

Yes I can. Read the contract, strike out with pen the parts you disagree to and initial next to them.

sign it and give it back after you make a copy.

All done, if they sign it, they agreed to the changes you made by removing parts in striking them out. I do it at every job I have been hired into, the contract is never 100% acceptable to me. Only a fool believes you have to agree to a contract as-is. even bigger fools believe you have to use a lawyer to do such things.

Grab a pen, start removing parts you dont like. It's quite fun.