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

You are allowed, they are allowed

[markdavis]

> Are they allowed to completely strip my rights to the software?

Um, they are allowed to ask for anything they want (that is not illegal) in a contract, and you are allowed to either sign it or not. If you are paid by them and write the software on their time and sign a contract saying they own it, you don't HAVE any rights for them to "strip".

You are also allowed to negotiate, although I wouldn't hold my breath...

Yep. they can.

[jwiegley]

As a research student you are "hired" by the university. End of discussion. Your tuition and stipend are paid to you from research grant money that is owned by the university/professor.

Faculty members at some universities may retain their intellectual property rights. This is because there is a separate contract negotiation that takes place between faculty and universities. You [the student] are not part of this agreement.

At every PhD institution I know of, Teaching Assistants and Research Assistants are employees. In fact, third-rate employees. You get no health benefits, you get no retirement benefits and you get no intellectual property benefits. Basically, you get no benefit other than an effective scholarship.

You're screwed. They own your software. It is black and white.

attorney - and you're probably wrong. Fail.

[arete]

several posts say talk to an attorney, in detail, when they can READ your contract, and they're right. IANAL. However, since this is the Internet, I want to take this opportunity to point out several substantial flaws in your submission.

0. Posting here and not getting an attorney. Fail.

1. A purely ownership and non-personal right like this, it's very unlikely there's any prohibition against you signing it away. (Unlike, e.g. some noncompetes which are SOMETIMES unenforceable.) Fail.

2. If you sign this when you obviously (and demonstrably - you posted it here!) thought they intended it to mean you had no ownership, the courts will not look kindly on you turning around and saying you don't believe that. That's called 'bad faith'. Even if the contract WAS weak, if it's clear that both parties understood the same intent, usually that's what happens.

And there's a good reason for that. Knowingly signing that when you clearly believe they mean that if you don't intend to carry it through makes you a liar.

Fail.

3. That the faculty, who have a totally different contract, get to keep their work has no bearing on your contract. Fail.

4. The faculty don't even meet the standard you set out - which is 'if you're paid TO develop software' - which they aren't. They're paid to uphold the educational mission of the institution and do their research. The actual software is (at least contractually) secondary.

I'm not telling you not to take the job -

I only see two glimmers of hope here:

- If the UNIVERSITY's contract with NSERC specifies something different, you count point that out to them.

- I don't know if this is in your goalset, but depending on the U, if you WANTED to open source your project (whatever license) the U may allow that - and you MIGHT be able to get them to approve allowing that BEFORE hiring you. YOU will still own none of it. They'll own all the rights to sell a closed source version, etc., and they could un-open-source their future versions. (Which, if you were GPL, no one ELSE could legally do) But they can't exactly 'unlicense' the code they agreed to release.

Don't give anything away

[gnasher719]

The university may or may not have certain rights. Whether you agree or not doesn't matter, they have whatever rights they have and they don't have whatever rights they don't have. There is no way they can force you to sign over any rights. Either they have these rights, then they don't need you to sign them over. Or they don't have the rights, then you are under no obligation to sign them over. (BTW I was told that in US law, you can't sign over copyrights that don't exist yet. Like the copyright for a book that you are going to write, or the copyright that you are going to develop. For the simple reason that the copyright doesn't exist. The signing over must happen when the copyright actually exists).

Re:Do what the rest of us scientists do, publish

[yerM)M]

I hate to bring this up, but this reminds me of why the majority of american taxpayers prefer a tax system that hurts themselves. i.e. they imagine themselves being rich and don't want to screw themselves when they (never) get there.

Having been through this, there are three likely outcomes in decreasing probability.

• What you do stinks and you'll be embarrassed looking at it two years down the line.

• What you do is ok and gives you a paycheck and knowledge for the next task

• What you do is great.

Assuming the latter greatness, in my experience the likelihood of the university patenting your algorithm is vanishingly small. But if they do, great! You are a young researcher with a patent. Chances are the Univeristy will profit share ( in theory at least. At one institution the patent office made just enough money to, you guessed it, fund the patent office ). If they don't, you are a young researcher with a patent. Sounds like graduate school gave your career a boost. Ten years down the line I'd rather have a patent under my name than the software I wrote.

In either case, publish. Publishing is the GPL of the academic community. I have had greater success making my source code GPL when I talked to my principal investigator about supplementary materials for publications than at any other time. If this fails at least you'll know whether the algorithm is patented before publication, if it isn't, you will be able to use the algorithm in the future free and clear. If it is, I'll repeat myself: you are a young researcher with a patent AND a publication.

Re:Not always.

[TheRaven64]

My university owns code I wrote for some projects, which is why I got it written into the grant application that any code developed on those projects would be released under a BSD license. This means that it doesn't really matter who owns it - I can use it in any project I want to in the future.