Copyright vs Exclusive License? 95
cdanzig asks: "My company recently hired a development house to do some contract work for us. They did great work, but they are claiming that they now own the copyright on the code and are issuing us a permanent and exclusive license. My bosses are concerned that this will hamper our ability to make changes to the code or prevent us form being able to claim the software as a company asset. What is expected protocol between a client and a development house? What is the long-term difference between owning a copyright and owning an exclusive license? If we paid for the development of the code, is it fair for us to demand ownership?"
This is an Ask Slashdot FAQ (Score:5, Informative)
If your company didn't negotiate this when you hired the development company, it's your company's fault. But all is not lost. You may be able to prove that the software is a work-for-hire. Get a lawyer. Your laywer might be able to negotiate in a way that you can not, because it will be clear when the lawyer calls that you would consider a lawsuit. Tell the lawyer you want the other company to provide the copyright, and your legal fees.
Next time, have a lawyer work with you before you sign a contract with any company.
FYI: I am an expert witness. I get paid to testify in lawsuits when engineers don't call laywers before they accept a license or sign an agreement.
Bruce ~
Re: (Score:2, Insightful)
Re:This is an Ask Slashdot FAQ (Score:5, Informative)
Bruce
Re: (Score:1, Interesting)
Non-identical cousins. (Score:1)
Re: (Score:1)
Re:This is an Ask Slashdot FAQ (Score:4, Interesting)
Hm. This is pretty basic material about negotiation, something I'd expect any manager to know, not just a corporate attorney. A while back I had some stockholders in a small business of mine threaten to bring suit. Not because they had a real complaint, but really just to get more stock out of me. It turned out they were playing "who will blink first". My side won. But it taught me that this is not limited to corporate attorneys at all.
Bruce
Re: (Score:2)
So what? You're Bruce Perens; we expected better of you. Just because it's "basic" doesn't make it right!
Re: (Score:2)
Bruce
Re: (Score:2)
You're exactly right that we don't have enough details yet, which is why I was surprised at your rather rabid suggestion to (effectively) "sic the lawyers on them!" Like I said in my other reply to you, advising them to get a lawyer to explain the contract is one thing (and makes perfect sense), but advising them to get a lawyer to try to forcibly extract the copyright whether the contract allows it or not is another (and is what you actually did, unless I misunderstood your post).
Re: (Score:2)
I like you and I think you're intelligent, but I think you're being a starry-eyed idealist here. Any time there is a legal dispute, "sic the lawyers on them" is precisely the correct attitude. "See who blinks", likewise. See, we don't yet know if they are supposed to have the copyright on the materials, or not. As far as you know, the company th
Re: (Score:2)
The point I'm trying to make is that I see a distinction between consulting a lawyer and "siccing" the lawyer on the "enemy." First of all, there's not actually a dispute yet; the submitter is just trying to figure out what the situation is. The dispute only occurs if it turns out that his company doesn't have the rights it thought it had.
Second, I'm not arguing against the end result of Bruce's advice (i.e., hiring a lawyer); I'm objecting to the adversarial mindset he's advocating. At this point, the sub
Re: (Score:2)
As I see it, a lawywer is good for only two things: attack and defense. And sometimes the lines are blurred there, though of course a legal suit involves a plaintiff and a defendant - but sometimes the best defense is a good offense and all that.
If the guy is trying to fuck the other guys out of money, then it's an attack. But if the other guys are trying to fuck him o
Re: (Score:3, Insightful)
Re: (Score:2)
You don't have enough details yet to determine which side is in the wrong. In general, I would side with the customer, which is what I'm doing so far.
'
I'm with you on this Bruce, if for a reason that nobody (up to this point in the thread line anyway) has mentioned. As a developer I don't necessarily side with the customer but there is no excuse for the customer not already knowing the licensing ter
Re: (Score:3, Insightful)
Re: (Score:2)
Yeah, but that's a Hell of a lot different then getting a lawyer to bully the poor contractor, which is what you advocated in your previous post!
Re: (Score:3, Insightful)
Re: (Score:2)
I was offered the opportunity to do a subcontract for a company doing business with the government and their contract included an Incorporation by Reference of the FAR clauses which I tried to investigate and got lost in the maze. "Incorportation by Reference" means that t
Re: (Score:2, Insightful)
It is very likely that that is exactly why the developers want to retain copyright. If they can forbid modifications by the customer or people hired by the customer, then they have a monopoly on the supply of further development, with the cost of the first version as a barrier to entry into the market for anyone else.
A different view onwhat is most important here (Score:2)
Actually, the first thing that occurred to me was "What about the ability to resell the program?" It seems to me that, from the standpoint of the development house, maintaining the copyright is a means to prevent the client from going out and reselling your work, in all or part, and basically shutting them out from other potential clients. It would suck to be underbid by someone else legally reselling your own work.
I'll agree with almost everyone else here and agree that this sort of thing really shou
Re: (Score:2, Interesting)
I don't know that getting a strongarm monopoly is the only reason that these guys would desire to maintain some rights in the copyright to the code they created. They may very well recycle snippets of code from project to project, and don't want to be put in a position where a former client finds out that they do so, and then claims that they're infringing on a copyright for code that they themselves wrote. I'd certainly not want to find myself in that position.
There has to be an agreement to share righ
Re: (Score:3, Insightful)
If this is the company's standard method of operating, it's quite likely that they reused a few wheels in this project. Turning over the copyright may require extensive rewriting to remove code that's already in other projects to which they retained the co
Re: (Score:2)
Bruce
Re: (Score:2)
EG I develop something for you, retain copyright, and give you an exclusive license.
Now, you can't go resell it, because you are only licensing it. And I can't go resell it, because you have an exclusive license.
Unless he didn't really mean 'exclusive' license.
OT: First Post? (Score:1)
Re: (Score:2)
Re: (Score:2)
Re: (Score:2, Interesting)
Obviously, a lot depends on what they did sign. But assuming they paid the company to write the code, that would clearly seem to fit the definition of "Work for Hire", and the contractor would need to prove that it wasn't by the wording of the original contract, and if the person who signed that contract did not realize that clause was there, thats potentially reason to nullify the contract.
Most likely the author now wants to resell his work
Re: (Score:3, Informative)
No, that's not really enough. Generally, it needs to be made in an employee/employer relationship. There's a whole laundry list of factors that go into that. CCNV v. Reid has a good summary of them.
Re: (Score:2)
Re: (Score:2)
a contribution to a collective work
part of a motion picture or other audiovisua
Re: (Score:2)
It's really up to what the contract says.
Bruce
Re: (Score:2)
Re: (Score:2)
It could also fit under a contribution to a collective work.
And even if it is not a work for hire, the contract could be to convey all rights as if it were.
Bruce
Re: (Score:2)
For the record:
A "compilation" is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. "Compilation" is defined as including "collective works," which in turn are defined as works such as periodicals, anthologies, or encyclopedias, in which a number of contributions, constituting separate and independent works in themselves are assembled into a collective whole.
Yes, the contract could have been written in su
Re: (Score:2)
Bruce
Re: (Score:1)
In a lawsuit, one side says it was a work for hire, the other side says it wasn't. The presumption is no asignment unless expressly assigned. From there, you get into all the stuff to assume existence of a contract based on actions by the parties. sigh
What is the software for? Is
Re: (Score:2)
Where do you drink? :)
Re: (Score:1)
Kudos to you for bringing it up.
Re: (Score:2)
Yeah No kidding.
What is expected protocol between a client and a development house?
When they do this, sue the everloving @#&% out of them. If you paid to have it written, it's yours... of course, you should check your contract... if you have one.
Re: (Score:2, Informative)
Re: (Score:2)
I'd say you have a right to own the copyright, and there is even a chance that work-for-hire applies, dispite the narrowness of work-for-hire in the copyright title that others have pointed out. But I'm not the judge, or even a lawyer.
Bruce
View from a Software House (Score:1)
I run a software development house and we used to get into this kind of sticky situation from the other end a few times many years ago, until we explicitly stated in all proposals who would own the end product, whether it was a license etc etc.
The default years ago used to be that if the ownership question was not addressed it would belong to the development house. Nowadays it's not so clear, and can go either way in court. You pays your money and takes your chance.
My $0.02-worth is this - I think it's
Re: (Score:2)
Speaking as a jobbing developer, I normally retain copyright in what I do; this is, in any case, the default position by law in Europe unless the contract explicitly states otherwise. I usually then publish the software under the GNU General Public Licence. What the firm who commissioned the software get out of the deal is:
Obviously,
What is expected protocol? (Score:2)
If you didn't think/plan ahead, take whatever you can get.
Sorry if that sounds rude, but I spend most of my day dealing with other people not thinking/planning ahead and then expecting somebody else (i.e. me) to bail them out. It gets old.
The code should either be yours or free (Score:2)
check the contract (Score:2)
If the contract says nothing about who owns the code, it may probably be treated as a work-for-hire, which would mean you owned it. OTOH, if they assert copyright and you don't fight it, you probably won't be entitled to list it as a company asset. Contact your attorney.
</IANAL>
Re: (Score:2)
Re: (Score:2)
Re: (Score:2)
If the contract says nothing about who owns the code, it may probably be treated as a work-for-hire . . .
False. If the company that wrote the code wasn't an "employee" of the contracting company (either actual or de facto, per the 12 non-exclusive, non-singly-determinative factors in Restatement of Agency 2d 220 (applied in a copyright context by SCOTUS in COMMUNITY FOR CREATIVE NON-VIOLENCE v. REID, 490 U.S. 730 (1989), http://caselaw.lp.findlaw.com/scripts/getcase.pl?c ourt=US&vol=490&invol= [findlaw.com]
Should have been defined in the services contract. (Score:1)
If it was, and they are reading it correctly, have your purchasing department and/or counsel taken outside and spanked hard.
If it was not addressed, have said purchasing department and/or consel taken outside and shot immediately, and then hire competent counsel to get you out of the mess.
Exact terms? (Score:2)
Say byte me... (Score:1, Insightful)
It would be nice to know... (Score:2)
Re: (Score:2)
Re: (Score:2, Informative)
A permanent exclusive license states that you have the right to use the code indefinitely. And (in our contracts anyhow) state that you also have the right to modify, and reuse the code in other internal projects. This is the cheaper option for the client, as it means the development house can also do the same -- create derivatives, alter and reuse the components in ot
Standard Engineering Practice is for Licenses (Score:3, Informative)
My local engineering association recommends only giving out licenses for all engineering works. The reasons are fairly obvious. Firstly, you can design a building (or a software program) for a client to use, without owning all the copyrights associated with it. For instance, suppose the consulting company used some example source code from Microsoft in the production code. They are allowed to do that. They aren't allowed to give the client the copyrights to Microsoft's example source code. It doesn't
Re: (Score:3, Informative)
First off, its historically very common in photography. And usually represents an arrangment where the the photographer agrees not to resell a photo to any other customer, but the buyer can't go and start reselling it either, except for maybe a one-time transfer where the buyer transfers the permanent/exclusive/transfer license that they have to another 3rd party.
The idea is that if you were buying a photo to resell, the photographer would probably want a royalty component. Bu
What does the license include? (Score:4, Informative)
Re: (Score:2)
Bruce
Re:What does the license include? (Score:4, Insightful)
When I've done contract software development in the past, I've brought a common library of foundation code that gets me started very quickly. I wrote this library after completing projects for two clients and realizing that I started each project with the same two months worth of work. So in the next downtime, I wrote a more flexible/reusable version based on lessons learned.
I'm perfectly happy to license this code to my clients and allow them to maintain it themselves once I'm out of the picture, but I don't want to lose the ability to use that library for the benefit of my next client.
IMHO, the best option is to negotiate the licensing terms of all of the parts of the project up front and in good faith. This means being clear that the contractor is bringing code written elsewhere to the project and wants to retain ownership of that code. This means being clear that code written specifically for this client (embodying confidential and domain-specific knowledge) will not be owned or re-used by the contractor. This also means being crystal clean about billing of time spent maintaining the outside library (*). There are a few ways to clearly differentiate between the three kinds of time. I find that a "domain-specific" test is generally enough to leave both parties satisfied that their interests will be protected.
* If we expect significant expansion of the non-domain-specific code I've brought, I'll ask for a lower rate when working on that part of the system. Otherwise, if the maintenance take more than an hour in a week, I'll eat the time, less than an hour in a week and I'll bill the time. This has usually been acceptable to my clients and acknowledges that we both benefit from that time.
Playing games just means a lot of hard feelings, a lost reference, no assistance maintaining the project, and nobody is happy at the end of the day. Be clear, be honest, and negotiate from shared goals instead of trying to screw every penny or minute of time from the other.
Ross
Re: (Score:2)
Well, theoretically copyrights still expire eventually. The H.G. Wells novel War of the Worlds is in the public domain. However at some point in the 1950's Wells' estate gave exclusive license to Paramount for film rights. That exclusive right was held up in court just a five years ago when Hallmark Entertainment wanted to do a War of the Worlds film of their own and Paramount shut them down. Seems like, at least in tha
Re: (Score:1)
Well, theoretically copyrights still expire eventually.
Well, theoretically the war in the Middle East can end eventually. But until it happens, I'm not holding my breath, as greed cuses both resource wars and a succession of Bono Acts.
Seems like, at least in that case, contract law trumped expiration of copyright!
For one thing, trademarks on the title of a work do not expire. For another, foreign copyright in the works of H. G. Wells had not expired and as of 2007 still has not expired in Europe
Not enough information. (Score:5, Insightful)
In increasing order of expected value:
1. Temporary, non-exclusive right
2. Permanent, non-exclusive right or temporary, exclusive right
3. Permanent, exclusive right
4. Copyright transfer
The author has the right to expect greater compensation for greater value delivered. Perhaps you should try to negotiate a transfer agreement before you get too up in arms about this matter.
Re: (Score:2)
He would not be able to use pieces of code he wrote elsewhere because of two reasons. First, he would have to give up ownership of the code. But that brings up the second, thornier problem -- if he had already used that code in a project for someone else, there might be potential serious license problems for his earlier customers.
If I hired a developer to write some
As a feelancer (Score:4, Informative)
Whenever I have done freelance work, I have always stated up front where I stand on retaining copyright. In general, I retain copyright for projects unless stated otherwise - but I let the client know that upfront and that it is open to negotiation (in general, I charge the lowest rate for clients who want a non-exclusive license, more for clients who want an exclusive license where I retain copyright so I can use modules in future projects, and the most for transfer of copyright).
As for work for hire, as a rule of thumb, a project is work-for-hire if the project is created using company resources, so if the contractor used your companies computers and office space, then it could reasonably be considered work for hire, whereas if you gave them specs and they came back with a disk, it might be harder to make the work-for-hire argument. Once again, you'll have to talk to a lawyer about that, since there are all kinds of subtleties and differences from state to state, country to country, etc.
I would say, get a lawyer and try to work out your situation in this instance, and consider that you may have to chalk up a lesson learned. In the future, discuss this with contractors before hiring them.
Re: (Score:3, Insightful)
That's obvious. The relevant law:
Works Made for Hire. -- (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signe
Re: (Score:3, Insightful)
Whether it's a company or not doesn't matter. 1 can apply, but it's very dependent on the details involved.
Hire another company to invent a time machine (Score:1)
2) Send blueprints, code, and a completed time machine, and source code for existing project, back in time
3) ???
4) PROFIT!!!
Re: (Score:2)
1) Hire another company to invent time machine
2) Send blueprints, code, a completed time machine, and source code for existing project back in time
3) Get all of the above siezed for violating the patent on the time machine (Patent No. 1, issued the day the Patent Office opened -- when else would you be first-to-file with a time machine?)
4) ???
5) They PROFIT!!!
Maybe they didn't write all the code (Score:3, Interesting)
Permanent and exclusive license (Score:2)
IANAL (Score:2)
It should have no impact on internal use and maintenance.
The contracting house may not exist in a few years anyway.
From the other end... (Score:3, Interesting)
So does anybody have a magic solution that gives the client the right to use the original work that they've paid for, without the developer having to give up the rights to every last generic utility class they wrote, and consequently having to clean-room their next project, lest the original client sells out to a litigation-only troll company?
(Yes, but apart from that, Dr Stallman...)
The amount of dilligence that can reasonably be expected from a developer rather depends on the length and scale of the project - if its a 5 year project to write a new operating system that's one thing, but if its just a 6-week website job the client can hardly expect to pwn your browser-sniffing code...
Share the copyright? (Score:2)
Better yet for both the contract developers and the client, the developers could assign the copyright on the complete work to the client but retain copyright on the libraries. This could allow the client who paid for it to do whatever they want with the whole project. They'd have exclusi
Re: (Score:2)
Client goes their own way, and does what they please with the code. Developer goes their own way and does what he pleases with the code.
Afraid of the specific condition of the client selling to a litigation company? Make the source code part of the license non-transferable.
Re: (Score:1)
Joint Copyright Assignment (Score:2)
In the FLOSS arena, I've long been a fan of joint copyright assignment, such as the one used by Sun and OpenOffice.org [pdf] [openoffice.org]. I'm not sure if there are any potential pitfalls for doing this in the client-freelancer scenario. But, in theory, it gives both parties carte blanche to do what they want.
Non-exclusive license . . . (Score:3, Informative)
The normal rule is the author of the work owns the copyright. However, when the work is done by an employee for an employer, or when the contract explicitly transfers ownership, we typically have a work-for-hire. When the contract is silent and the author is not an employee, we can have a non-exclusive transfer of license. Since the author did the work and was compensated, then the compensating party has the right to use the property free of any license control. The _Foad_ case is a good example of this. (http://www.ivanhoffman.com/nightmare.html)
The author cannot prevent you from using the software because you paid for its development. Heck, the author cannot prevent you from giving the software to a third party for them to improve it. Foad involved an architecture firm creating plans of a shopping mall for a contractor who sold the construction project to another contractor. The second contractor then gave the plans to its outsourced architecture firm who removed all references to the original firm and essentially copied it. The Ninth Circuit said the nature of the relationship between the original parties created a non-exclusive license which allowed for this. In law, this is grounded in equitable principles of quasi-contract or unjust enrichment. The court in _Foad_ split in two directions (2-1) on the underlying cause of the transfer, but were unified in the existence of the transfer.
This is a state law issue because Congress implicitly ignores non-exclusive transfers, and the occurrence of these transfers is contractual in nature. Contracts are usually governed by state law.
I think they can revoke the license; but only by paying you back all that you spent. When the grant is made "for compensation" (usually money), the grant is irrevocable. In two circuits, the revocation can only happen when the license is between 35 and 40 years old!
Get thee to a good IP attorney and stop asking
As an aside, the Open-Gaming License put out by WOTC (Hasbro is it now) is a explicit non-exclusive license grant.
Who cares what they say... (Score:2)
Who cares what they say, what does the contract say?
License (Score:2)
1. The development house owns the copyrights, not your company. Period.
2. Your company has an implicit non-exclusive license to use, modify, improve and even sell the software if it can be done in a manner consistent with the purposes you discussed with while creating the contract. Note however that they would be entitled to a reasonable portion of the proceeds in any outright sale of the software.
There are a few exc
Work for Hire (Score:1)
Works Made for Hire. -- (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrum
Get it in writing beforehand. (Score:2, Insightful)
Verbal agreements, basic quotes, and general practice are one thing if you're talking about off-the-shelf stuff, but when somebody's doing custom work for you -- of any kind, whether it's software dev or landscaping or advertising or business consulting or whatever -- you want everything spelled out in black and white before you pay them a dime. Things you want spelled out include, but are not limited to, the following:
* exactl
Why ask these questions? (Score:2)
Are you really going to take advice on your IP from a Slashdot post?
Perhaps I'll go ask my barber how to configure SSL on Apache? I'm sure he'll have some good advice.
It's Quite Simple (Score:2)
What I find more interesting is the licensing. You should have been told what the license would be before the work was begun. A permanent, exclusive license is the next best thing to owning the copyright, as they can