Dealing With an Overly-Restrictive Intellectual Property Policy?

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Dealing With an Overly-Restrictive Intellectual Property Policy?

Posted by timothy on Sunday February 12, 2012 @09:27AM from the they'll-take-a-mile dept.

An anonymous reader writes "I am very happy with my current job, but there have always been a few ideas for things I've wanted to develop on the side. Ideally I'd keep my day job, reserving mornings, evenings and weekends to see if the side-projects could become viable. The problem is: my employer has an IP policy that states that anything I do while under their employ is theirs, even when I'm off the clock. Does anyone have suggestions about workarounds, magic loopholes, false identity for the side projects? Anything?"

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Two mostly similar choices by Anonymous Coward · 2012-02-12 09:27 · Score: 5, Insightful

Disclaimer: Where I work they are cool with "moonlighting", with the stipulation being that you must check with legal. Never been in this situation so this is largely guess work based on stories I've heard from others!
The obvious is of course to get a new job. I'm sure lots of people are going to recommend that, but of course it is rarely that simple.. especially in this economy and you like where you are working now.
The less obvious is to negotiate with your employer/your employers legal department. Just be cognisant of the fact that this may inadvertently force you into option 1. If the terms of your employment are there just to cover their ass.. you might be able to work something out if your ideas arn't within their business area. Just keep in mind that you are asking to work on something that you hope will lead to you resigning and pursing full time (I assume) and they may have a problem with that as well.
I guess the real question is, how sold on your own ideas are you? Willing to risk your job?... because I really don't see a way of persuing this that doesn't end there.
1. Re:Two mostly similar choices by mrvan · 2012-02-12 09:34 · Score: 5, Interesting
  
  What I did at my current (academic) job is to keep copyright with my employer, but have them license it back to me under GPL. This means that if I move jobs or start my own business I can keep working on these projects. You can sell it to them as showing how they (ie, you) contribute to the community etc, and that they keep all IP so there is no danger of you suing them and they can always relicense.
  Downside is of course that your future business model would have to build around an OSS core, but there are various options (OSS backend with proprietary frontend, web business / software as a service (no distribution = no requirement to give source code), proprietary modules that actually make it work (but make sure that the proprietary part cannot be construed as a derived work), etc etc.
2. Re:Two mostly similar choices by Sir_Sri · 2012-02-12 09:41 · Score: 5, Informative
  
  At least in academia most places let you separate your work on the side. If you want to use your work on the side as part of your research work well that's where you get into your situation. When they ask "what are you doing on our time" you have to say something.
  When it comes to the question at hand, one option is to pitch the ideas to your employer. The other is to get a separate job, or ask to renegotiate that portion of your contract or move into a job within the company with a less restrictive contract. Expect that to come with a significant paycut though.
  You actually run the risk, even asking the question, of implying you have an idea for a product on your current companies time, that you may be thinking about (even if not implementing), so if you leave they may claim that work was done on this project on their time, and you're in violation of their agreement, and they have ownership of some of your work. The question posed could be phrased as 'i have this great idea for a product, how do I get out of having to give my employer any money for it'.
3. Re:Two mostly similar choices by tchuladdiass · 2012-02-12 09:55 · Score: 4, Informative
  
  This may or may not help with the current situation, but with regards to choice 2, (especially during the hiring process) mention that you do some community work on the side for non-profits, and that the entities you deal with want to make sure there are no legal issues with anything you contribute to them. Sell it as you helping your church with their web site (even if you don't have a church...), or helping with backend systems for running a homeless shelter, etc. That opens the door to them letting you adjust that part of your contract -- after all, which employer would want to be seen as squashing their employee's ability to do charity work / help the community?
  Then, take the contract to your lawyer, tell him what you want to have covered, and he will be able to re-word that section of the contract as an amendment for you to have your employer sign. This may work better at hire time than once you've been at a place for a while though. But worth a try.
4. Re:Two mostly similar choices by ray-auch · 2012-02-12 09:59 · Score: 4, Funny
  
  At least in academia most places let you separate your work on the side. If you want to use your work on the side as part of your research work well that's where you get into your situation.
  I wouldn't trust that to be the case everywhere - my recollection is of research grants / studentships coming with "everything you do while you get this grant belongs to...". Plus you had to co-operate in patenting it if they wanted and sign over the patents. etc.
  That was a lot of years ago though - maybe it's all more enlightened, less money focused and less bureaucratic in academia these days...
5. Re:Two mostly similar choices by LehiNephi · 2012-02-12 10:03 · Score: 4, Interesting
  
  I found myself in exactly the same position about a year ago. Here's the thought process I went through:
  
  1) If it's a marketable idea, one that could make bucketloads of money, the employer is going to pursue it. They'll even want you to spend work hours on it. Or they'll apply other company resources ($$$) to it.
  2) If it's something you think is super cool, but isn't marketable, the employer isn't going to care about whether you do it on your own free time.
  3) If it's an idea you think is awesome, your employer doesn't agree, and you turn out to be right (it becomes successful), this is the only place where there's a rub. One option (if it's some sort of internet site) is to run it through a proxy (person)--get a friend/neighbor to set up the service but give you all the necessary access to develop/administer it. Another is to fully develop the idea, but hold off on implementing until you're out of the employ of your current employer. A third option is to talk to legal and/or your boss and see if you can carve out an exemption from your contract for work not related to your employer's business.
  
  For my current employer (who has a policy quite similar to yours), they were very open about the reason for such a policy. Simply put, they're hiring you for your mind, and if you've got a great idea, like it or not you'll be thinking about it during work hours. If you feel your current employer isn't compensating you sufficiently for all of the products of your mind, then you probably need to either A) talk to your employer about it, B) find a new job, or C) reassess how valuable your work really is. No offense is intended, but since you haven't mentioned how well you're paid, or even what industry you're working in, I have to leave it as a possibility.
  
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6. Re:Two mostly similar choices by MSTCrow5429 · 2012-02-12 10:07 · Score: 5, Informative
  
  Consulting with the employer's legal department is likely to be unproductive. Their client is the corporation, and they are not under any obligation and are likely prohibited by their State bar's code of professional conduct from telling you what is and is not enforceable in an employment contract. Do not contact the employer's legal department absent your own legal representation and do not attempt to negotiate with the employer's legal department absent your own legal representation. You should also consult with a lawyer on what, if any, retaliation the employer may legally perform in response to any attempts to modify or nullify the employer-employee IP contract.
  
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7. Re:Two mostly similar choices by Anonymous Coward · 2012-02-12 10:12 · Score: 5, Insightful
  
  Simply put, they're hiring you for your mind
  No, my employer is hiring me to do work. If they can't tell me ahead of time what work they want done, they have no claim on it.
  
  and if you've got a great idea, like it or not you'll be thinking about it during work hours.
  I think about a lot of things during work hours. As long as I'm not wasting work time just thinking about stuff, they have no reason to complain and no right to dictate what I can or can't think about.
8. Re:Two mostly similar choices by patchmaster · 2012-02-12 10:37 · Score: 4, Informative
  
  In my admittedly limited experience, the subterfuge you recommend is not necessary. Just be honest about the situation. If your side projects are in an area that overlaps with your employer's business, then they have a legitimate right to refuse. If there's no overlap, then there's no legitimate reason for them to not make an accommodation.
  I had a side business doing software for material handling. When a prospective employer showed me their IP/non-compete agreement we had a discussion about the situation. They had the lawyers modify the agreement to accommodate what I was doing. The result was we both understood each other's position and knew ahead of time exactly where the lines were drawn. In the end it turned out there was some conceptual overlap between the two endeavors, but this turned out to be to my employer's benefit as things I'd learned in my side business were directly applicable to my primary job. There was no conflict with customers because we were addressing completely different industries.
  Dishonesty is not a good foundation for any kind of new relationship, but especially not for one with an employer.
9. Re:Two mostly similar choices by graphius · 2012-02-12 11:14 · Score: 4, Interesting
  
  You actually run the risk, even asking the question, of implying you have an idea for a product on your current companies time...
  This is one of the reasons I don't think corporations should be able to hold copyright or patents. While the company may have helped fund creation of an idea/project, it was a person, or at most a group of people that actually came up with the idea. I do think that the company should be able to stipulate generous licensing terms, or even be exempt from paying royalties (they already pay the inventor a salary after all), but ownership resides in the inventor. This also gives the corporation incentive to treat their employees well, so they will stay and continue to license the ideas to said corp.
  Of course the downside is that things can become a bit more complicated when a group of people invent something, but any lawyer worth their salt should be able to figure out a succession plan. In fact that is all the corporate ownership really is, a complicated, one sided succession plan....
10. Re:Two mostly similar choices by TheGavster · 2012-02-12 11:20 · Score: 4, Insightful
  
  The feeling among engineers at my current place of employment is very similar (that the job is basically McDonald's but with much better pay and no customer interaction). While it is certainly something that an employer can encourage through policy (having salaried workers still punch an hourly clock, lack of input into future work ...), I think that this attitude represents a lot of what's wrong with the modern intellectual workforce.
  McDonald's pays people by the hour because there is a clear distinction between work and not-work, and they pay you to be in work mode for x hours. Work/life separation is more difficult with engineering work (eg, a short-order cook cannot work from the toilet, but an engineer may have a leap of insight there). I think that an effort is required from both sides to make the most of a worker's mind.
  The first step is likely best taken from the employers' side; at all of the firms I know engineers at, they punch an hourly clock and are charged vacation time when they don't make 40 hours in week. A true salaried worker should be paid a fixed sum per week, staying late when a task is down to the wire, but at the same time leaving early (or for part of the day) when waiting on data or between projects. The hourly mindset leads to people sitting around waiting for an arbitrary time to arrive, or checking out before the job is done.
  
  --
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11. Re:Two mostly similar choices by niktemadur · 2012-02-12 13:08 · Score: 4, Interesting
  
  If your side projects are in an area that overlaps with your employer's business, then they have a legitimate right to refuse.
  You bring up a very valid point. On first impression, overly restrictive intellectual property smacks of intellectual slavery, but then there's always the risk of an employer's ideas, know-how and internal processes being used against them by ambitious yet unimaginative and unscrupulous employees.
  It's a classic scenario, isn't it? The manager of a X business quits and opens a copycat store, sometimes even right across the street, and a working relationship has turned into a rivalry, with the new business having privileged information about how his former employer does what he/she does.
  Then, the new business could sell tacos, sandwiches, salads, pitas, gyros, ANYTHING, but inevitably it's also gotta be burgers, right? WHY does it have to be the exact same fucking thing?
  True story: An office/school supply store was doing pretty good business, until some misguided imbecile tried to duplicate lightning in a bottle and opened another supply store next door. Now there's two businesses sharing the same number of customers in the same block, both struggling to make ends meet now, a toil and chore just to stay afloat.
  Another one: For ages, there were no Spanish cuisine restaurants in my town. One finally opens up, and it's a resounding success. Within a year, there were five Spanish restaurants. Within another year, all had closed down, not enough customers to go around. Meanwhile, during all that time, no Thai or Vietnamese, no Peruvian or Brazilian, no Greek or Turkish, not even a place to get a decent baked potato with toppings. BRILLIANT!!!
  
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12. Re:Two mostly similar choices by Anonymous Coward · 2012-02-12 13:14 · Score: 5, Interesting
  
  I am in my 50s, and when I was in my 20s things were different. Back then it was customary that one's inventions were one's own unless they were created during the work day as part of one's job.
  What has changed is that corporate lawyers have instituted employee agreements that are much more severe - absurdly so.
  One should not be willing to sign an agreement that gives an employer rights to anything you think of during the term of your employment. Your job is not your whole life. Employment is not indentured servitude.
  I myself never sign such an agreement. It often becomes a difficult issue, but I just don't sign, and I have never been fired because of it. One thing I have often done is modify the agreement, crossing out the phrase "in the course of" and replacing it with "pursuant to" where they specify that they own IP that is created "in the course of" my work. These two phrases mean very different things.
  Nowadays, I usually do my work as 1099 for this reason, since expectations with respect to IP are different. Employers think that they "own" anyone who is a W-2.
13. Re:Two mostly similar choices by epyT-R · 2012-02-12 13:59 · Score: 4, Insightful
  
  no, he is not not their bitch. he is their employee. there is supposed to be a difference, though in today's world things like individual liberty and life balance are dying out in favor of unhealthy social dynamics. I think the bigger point is that employers should not have the right to expect or have such control.. it blurs the line between employee and slave. agreeing to stuff in a contract under duress (which this is since the choice is work or don't eat) is morally questionable at least, and probably against the law.
14. Re:Two mostly similar choices by ArsonSmith · 2012-02-12 16:05 · Score: 5, Funny
  
  you and at most a few others would have to get together and form a legal entity that could then hold that copywright. We could call it a grouporation or a cooperative relationship or something. You'll probably want to make sure you have someone to manage the inventors and some people to help find other talented inventors so you may want to make a people resources department. You'll need to take in some money to get everything started and you'll want some people that can manage it for you so you'll want to hire some money counting people. You'll want to sell your invention so maybe you could have a whole depart^H^H^H^H^Hsection of product price negotiator people. You'll probably want more people to help manage some of these things too. Just as long as it's not a corporation that holds these patents and copywrites.
  
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What is common depends on Where by icebike · 2012-02-12 09:29 · Score: 5, Informative

There is quite a bit of variation to be found in the practices of companies with regard to this issue.
A good write up is found here: http://www.ieeeusa.org/members/IPandtheengineer.pdf
The article suggest there are two or three broad models of what is acceptable practice in this ares.
First

The Massachusetts Model is so called because it is prevalent in the northeastern United States. It was developed toward the end of the industrial revolution as a response to shop rights. Agreements written on this model tend to imply that the intellectual life of the employee is company property.
Never backed by law, this model is the most restrictive,

The cycle of innovation and renewal is fundamental to a healthy market economy. To foster this cycle, individuals require the same protections for non-work-related intellectual property that employers enjoy for work-related creations. In 1977, Minnesota formalized this concept with a law limiting the enforceable terms of pre-invention assignment agreements. The Minnesota Model adopts the philosophy that while the employer should enjoy protection, it should not come at the expense of today's employee to become tomorrow's new employer.
In California there are similar laws to the Minnesota system:

The State of California followed in 1980, by implementing protection for its famous entrepreneurial culture. As of this writing Utah, Washington, North Carolina, Kansas, Delaware, and Illinois have also promoted new business formation by means of
similar laws

The text of the California law is on the web here. Washington state Here.
Appendix B of the above linked article has a summary of legislation in various states and list of states where such agreements are already limited by state law.

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A Contract Is What? by Anonymous Coward · 2012-02-12 09:30 · Score: 4, Insightful

Next time, modify the agreement before you sign it.
1. Re:A Contract Is What? by EdIII · 2012-02-12 10:03 · Score: 4, Interesting
  
  Next time don't even sign it.
  The last W2 job I ever worked tried to force something like this on me as well. My response was a lengthy legal agreement in which it spelled out all IP that I currently owned, was involved in creating, limited the scope of the IP they wanted to control to their specific business domains, etc.
  They never signed mine, and I never signed theirs. Received a couple of threats from HR, stood my ground, and it just quietly went away. Worked at that company for 3 more years without the signed contract.
2. Re:A Contract Is What? by St.Creed · 2012-02-12 11:26 · Score: 4, Insightful
  
  I used to think that as well. Until I came to be in the position to make demands and say "well, too bad" when they didn't want to meet them. As it turned out, if your demands are reasonable, you're probably going to get most of them approved.
  No contract is ever boilerplate. Sure, they have a template. Usually you will find very few people with the contract as originally proposed.
  That having said, being freelancer I can appreciate the IP issues. So what I normally do is tell people in advance which projects I'm working on, and are mine. Just titles and a very short summary. Never had a problem with that.
  I can also appreciate an employer not liking his workers to moonlight. It always spills over into your normal day job, even if it is just lack of sleep because you were so stoked from your new idea that you couldn't sleep. It always affects them. An open discussion about this, showing you understand those issues and how you will make sure they are mitigated, will usually go down well. Not always though - understand how your boss operates before doing anything.
  
  --
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TALK to them by swright · 2012-02-12 09:33 · Score: 5, Informative

Yes - explain why you don't like this, and what you intend to do in your spare time that you wish to retain ownership of.
These clauses usually come from a desire that employees don't misappropriate company IP and use it to write something competing. Or for a competitor (where the 'who owns what' question becomes murkier).
Any reasonable employer will write you an exclusion, but likely with a no-compete clause, which is fair enough.
IANAL, but I write the above as an employer, running a tech team of 21.
A double edged sword. by www.sorehands.com · 2012-02-12 09:42 · Score: 5, Interesting

When the company has a blanket policy that takes the employee's inventions, it can come to bite them in the ass.
When I was illegally fired by Microsystems, Inc. ("MSI") they took possession of work I did on my own time using my own tools. However, on the workers comp. claim their denial was based on the claim the tendinitis was caused in part by my work at home. Either MSI fraudulently denied the workers comp. claim, or committed fraud by asserting and taking possession of the work I did on my own time.
By having a blanket policy of owning everything you do, the employer could be on the hook for everything you do.

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Re:ask a lawyer by Anonymous Coward · 2012-02-12 10:14 · Score: 5, Informative

*all* contracts start in the favour of the people who wrote them.
you failed contract law
Contract Law is misunderstood by the public by CuteSteveJobs · 2012-02-12 10:50 · Score: 4, Informative

Mod parent up. Contract Law is contrary to what many people think it is, and I mean that in a good way. It tries to be very fair.

The general public think if it's written down in a contract, and you signed it, you're bound by it. That's wrong. Aside from the very relevant link the parent posted, if you walk away from a contract the other party is only entitled to actual economic damages. So long as your new product isn't competing with your old employer and you haven't taken any of their IP (it's a felony to steal IP), then they haven't lost any money and aren't entitled to a cent in damages.
Re:Almost certainly unenforceable by pacergh · 2012-02-12 11:59 · Score: 4, Informative

You're incorrect.
These agreements are enforceable. There are limits, and things well beyond the work you do for the company may very well be excluded from the agreement, but how often is that the case?
If you are a programmer, and work for a company as a programmer, and create a work on your own that involves programming, then it is related to the work you do for the company.
Beware the advice you receive on Slashdot about this.
If you think there is a chance you can make money off of a potential side project, protect yourself and your partners by hiring a tech startup lawyer.
Otherwise you may be paying a lot more in legal fees down the road.
And I am a lawyer, and this is an area in which I practice.