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Owning Your Own IP at a Company? 310

Posted by Cliff from the wouldn't-you-love-to-see-this-at-your-place-of-work dept.
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?"
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Owning Your Own IP at a Company? More

Owning Your Own IP at a Company?

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  • So naturally... (Score:5, Funny)

    by Anonymous Coward on Tuesday September 27, 2005 @06:37PM (#13662555)
    Please note, when it comes to contracts, nothing beats seeking professional legal advice.

    So naturally, it gets posted here.

    • Re:So naturally... (Score:3, Insightful)

      by PepeGSay ( 847429 )
      Your manager needs to seek legal advice. If he is letting you own the code you write purely on company time without some fairly serious legal consideration then he's way out on a limb.

      • Re:So naturally... (Score:5, Informative)

        by Pharmboy ( 216950 ) on Tuesday September 27, 2005 @07:16PM (#13662798) Journal
        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... (Score:3, Informative)

        by norton_I ( 64015 )
        That is actually the "standard" behavior in most US states unless you have an employment contract to the contrary, though typically your employer will automatically gain "shop rights" to the code as well.

        • Re:So naturally... (Score:3, Informative)

          by monkeydo ( 173558 )
          Your post may or may not be correct. If he is an employee, the employer likely owns the copyright, if he is an independant contractor, they may not. Then again, even if he thinks he's an IC he may not be as far as the law is concerned. If the submitter (or anyone else) is serious about protecting his rights, he really should talk to a lawyer.
    • IANAL but I agree, nothing beats professional advice. Although YMMV.
    • In dealing with a contractual issue, I heard/learned that the party writing the contract is under a higher burden of proof because, presumably, they had the most understanding of the arrangement and if they failed to put something in the contract, well...screw 'em.

      You might want to put the burden back on the other guy. He may know this. Although, IMHO, if they don't care, and you're a sysadmin seeking to keep IP rights over shell scripts, it's probably not important.

  • Easy (Score:5, Informative)

    by knoebelsPT ( 883833 ) on Tuesday September 27, 2005 @06:37PM (#13662558)
    Hire an IP lawyer.

    • I second this! (Score:5, Informative)

      by Karma_fucker_sucker ( 898393 ) on Tuesday September 27, 2005 @06:44PM (#13662609)
      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! (Score:5, Insightful)

        by iocat ( 572367 ) on Tuesday September 27, 2005 @07:58PM (#13663054) Homepage Journal
        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! (Score:5, Informative)

          by dindi ( 78034 ) on Tuesday September 27, 2005 @08:13PM (#13663155)
          "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! (Score:5, Funny)

            by Jah-Wren Ryel ( 80510 ) on Tuesday September 27, 2005 @08:56PM (#13663369)
            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.

        • Re:I second this! (Score:4, Insightful)

          by bedroll ( 806612 ) on Tuesday September 27, 2005 @09:40PM (#13663549) Journal
          The p.s. comment at the bottom of your post was more on target. With work-for-hire laws it's up to the employee to get a contract saying that they own their work, not the company to get a contract saying that they own it.

          If it were me, I would get a contract specifically stating that creating software is not part of my job description and that any software that I create is my own property and the company has no rights to it beyond those I grant. Then I would pick the appropriate creative commons license and use it to grant the company rights to use what I create.

          A lawyer shouldn't be needed so long as the employment contract is clearly worded. As for the license, well, lawyer's have already been involved in CC so there's little worry there. Also, in that case everything is very plain English, which seems like a win for everyone.

    • You are, of course, correct. However, he did say he was the only IT staff, which would suggets that hiring a lawyer for such a thing may be beyond reasonble expense for what appears to be a small business...

  • IANAL (Score:3, Informative)

    by secolactico ( 519805 ) on Tuesday September 27, 2005 @06:38PM (#13662559) Journal
    Have you considered consulting a lawyer? That's where I would start.
    • Sounds good to me.

    • Re:IANAL (Score:5, Insightful)

      by soft_guy ( 534437 ) on Tuesday September 27, 2005 @07:00PM (#13662713)
      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.

      • Re:IANAL (Score:4, Informative)

        by DarkProphet ( 114727 ) <chadwick_nofx AT hotmail DOT com> on Tuesday September 27, 2005 @07:45PM (#13662983)
        Exactly.

        I actually am going through the same issue right now with a company I am a partial investor in. It so happens I earned my share of stock by writing the backend database and client programs (desktop and web apps). Naturally, some of the code really doesn't have a thing to do with the company itself, however some of the code is by its nature tainted by the IP of the company.

        Basically I wrote up a 3 or 4 page document that stated to the effect that:
        • Prior Art - Code I wrote prior to the formation of the company will remain my property. Such code must be denoted as such in the collective "codebase" in order to distinguish that code from code that is "tainted" with the company IP. The company will be provided a no-cost lifetime transferrable license to use the binary code and modify the source provided it is not distributed outside the company or is used in any way which may decrease the value to the original author (i.e. myself. Standard copyright takes over from here).
        • New Code - Code that is non-specific to the company and/or is not tainted by company IP, but has been developed for the company's codebase, will be subject to the same terms as the Prior Art definition, with the exception that the license terms, specifically recompense to the author, will be negotiated on a per-project basis. (In other words, the code I wrote before the company was officially formed is free to use, new stuff probably is, but not in all cases).


        In my case, the company's internal software development is an ongoing project, so I had to specify some provisions for code auditing to help ensure that code that falls under either of these 2 categories can be verified to contain no company IP or backdoors or whatever in order to satisfy the other shareholders, but thats no big deal to me.

        I took the document to a corporate lawyer and he said its all good. The terms are clear and because I am not offically employed by the company, there is no preexisting company policy or signed employment contracts that would supercede this agreement. Note that in many cases the fine print in the employment contract you sign with your employer reserves all rights of the product of your labor to the company, no room for negotiation. The exception is when you are an independant contractor in which case you typically have a little bargaining power.

        The thing I never did really get cleared up was a hypothetical question I had -- What if I did the same work (no pay, stock only remember), but there was no documented quid pro quo stating this bunch of code is property of XYZ company in exchange for X percentage of stock? It would make sense the code I've written that does not contain company IP would legally default to being my property under copyright law, but what about the code that contains company IP? I suppose it would probably be illegal to distribute the code in any way, but would I technically have to let the company use the code?

        One of the other investors thinks the code would automatically become property of the company (because it contains company IP), but I don't necessarily agree. Any desktop lawyers wanna take a stab?

  • Can't say what I'd put in a contract, but... (Score:5, Interesting)

    by macshune ( 628296 ) on Tuesday September 27, 2005 @06:38PM (#13662563) Journal
    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 [law.com].
    • From that article: "Does the company own the ideas in this guy's head before he commits them to paper?"

      The ruling seemed to say it does own them.

      So... if the guy thought of murdering everyone in town as a form of PR for his company, and planned out a way for company employees to do it, then is his employer responsible and guilty of conspiracy to commit murder?
    • FTA:
      Brown, representing himself pro se...

      Guess this is what happens when you think "Gee, I don't need a lawyer. After all, all the legal advice I ever need I can get from Slashdot!"
    • if he was in CA, would have been fine. Californians are protected by CA 2870 which basically means, if he did it on his own time, without company resources, and it doesn't relate to the employer's business, they can't touch it... I am of course summarizing, and this doesn't constitute legal advice... however, he probably could have easily given them the finger if he lived here ;-)
    • From the article:
       
        "Brown, representing himself pro se,"
       
      Thats why he lost. He's even quoted as saying before that court that a idea in his head does meet the criteria laid down by, get this, Webster's Dictionary!!!.
       
        This is almost as dumb as asking slashdot for advice on writing a legal contract...

  • Intent of agreement (Score:2, Interesting)

    by nuggz ( 69912 )
    IANAL, but I think a preface like

    Recognizing the value of *soemthing like trying different things* the company encourages employees to work on their own areas of interest, and that such when such persoanl work is not related to their duties at work it shall remain their property.

    Then your future boss can't argue against what the true intent of the agreement is
    (IANAL)
    • dunno if parent was a joke or not... (IANAL) in my experience with some other contracts i paid to have looked over by an attorney, i learned that if there's a question, ambiguity, or unclear phrase or clause, the court will find against the person who drafted the thing.
    • IANAL, but...
      Then you are unqualified to offer any advice on this subject and you should STFU. If this guy needs advice on a contract then he should talk to a lawyer, not listen to the ill-informed opinions of the peanut gallery.

  • You write code (Score:5, Insightful)

    by lewp ( 95638 ) * on Tuesday September 27, 2005 @06:39PM (#13662574) Journal
    ... not contracts. If you have to ask, call a lawyer.

    • in an idiolistic world this is true but in a small company, or small IT environment. Crying lawyer will just make his boss uneasy in which case his boss will get a lawyer who will then claim the work is being done on company time and thus should belong to the company. I guess a good idea would be to get a lawyer but not let your boss realize this.

      Then there are also the concerns regarding usage should you decide to use the firm.

      • Crying lawyer will just make his boss uneasy in which case his boss will get a lawyer who will then claim the work is being done on company time and thus should belong to the company.

        No he won't. You get the lawyer to write a contract stating the opposite. The only thing that he should advise you on are issues that you've missed. The submitter's already got permission for this, so policy is already decided.

    • Owning an IP in a company is not at all a problem. Procedure:

      1. locate your sys admin
      2. bribe him with beer/ whiskey/ chocolate fish
      3. have your MAC address ready
      4. your own static IP
      5. ....
      6. profit

      Oh, we are talking about another type of IP here :p
      Forget step 1,3,4,5,6 then.

  • Just some basics (Score:5, Informative)

    by Ahnteis ( 746045 ) on Tuesday September 27, 2005 @06:39PM (#13662575)
    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.
    • I simply gave joint copyright.

      The most of the code is GPL/LGPL mixed anyway (small amounts of closed... device drivers, etc.) so anyone could use the code, but it makes things simpler for things like license changes if we part company.

  • Hmmm... (Score:4, Insightful)

    by TheOtherAgentM ( 700696 ) on Tuesday September 27, 2005 @06:39PM (#13662578)
    Write the code at home and release it under the GPL license. Then go back into work and use that code. Also, please share with the rest of us.
    • Seems like a pragmatic idea until you realize that you're not being paid for work done in your own time for a company you've signed a contract for. I personally like to avoid not getting paid for work. I personally avoid working more than 40 hours a week. I personally avoid bringing my work home, even if my work in enjoyable.

      A modified version of this seems appropriate. Write the code under contract, the company gets a specified license to modify and distribute the software based off their needs (maybe t
    • You can write a general library which you will own. Then use that library in the company's proprietary code.

    • Re:Hmmm... (Score:3, Insightful)

      by Kjella ( 173770 )
      Write the code at home and release it under the GPL license. Then go back into work and use that code.

      See, there's just one little problem with this, it would fall in under "work for hire" if you wrote it to solve a work problem. And then you aren't allowed to release it under the GPL, because it's not your code.

  • And... (Score:5, Insightful)

    by tktk ( 540564 ) on Tuesday September 27, 2005 @06:40PM (#13662587)
    drug tests. Some companies are so strict that you don't even own your own P.

  • Keeps me comin' back (Score:5, Funny)

    by quokkapox ( 847798 ) <quokkapox@gmail.com> on Tuesday September 27, 2005 @06:42PM (#13662594)
    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.

  • Keep copyrights, give them a license (Score:5, Insightful)

    by AuMatar ( 183847 ) on Tuesday September 27, 2005 @06:44PM (#13662613)
    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.


    • 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.

      I would add that the company has a non exclusive license. Just to covery all the bases.

      You might also win points with your boss if you include a clause saying that you won't sell the same code or solution to a direct competitor for X months after termination of the contract. It's not as restrictive as a standard non-compete a

      • You might also win points with your boss if you include a clause saying that you won't sell the same code or solution to a direct competitor for X months after termination of the contract. It's not as restrictive as a standard non-compete agreement, but it will give your current employer a lot of peace of mind (which will make them like you more).

        Business is war. Do not volunteer this. Let your boss ask for it, but do not bring it up yourself. It could become a significant wedge to make your ownership of

    • Don't Forget Access To Code...And More (Score:5, Insightful)

      by reallocate ( 142797 ) on Tuesday September 27, 2005 @07:30PM (#13662885)
      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.

      • Probably not needed. (Score:3, Insightful)

        by lheal ( 86013 )

        ...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.

        That falls under a decent backup policy. Remember, the guy's a sysadmin, so he presumably knows enough to keep a copy of his work offsite, like at home.

        Asking the employer to grant him post-termination access is unreasonable. Sure, lots of people get asked to do consulting duty after leaving a job, but you don't know beforehand what

  • IEEE USA's sample consulting agreement (Score:5, Informative)

    by Anonymous Coward on Tuesday September 27, 2005 @06:45PM (#13662623)
    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.
  • (and you should) get it written with your interested in mind, do not worry about the company.
    You do this becauseyou are not obligated to go after them for some percieved infraction, where they may go after you for one.

    and if they have an issue, then you can adjust the contract to address that issue.

  • You do not own it (Score:5, Informative)

    by Un pobre guey ( 593801 ) on Tuesday September 27, 2005 @06:48PM (#13662633) Homepage
    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!

    • Re:You do not own it (Score:3, Informative)

      by tverbeek ( 457094 )
      Right. Thanks for stating what should be obvious from the context of the question, which was how to draft a contract that changes that state of affairs, such that the code he writes isn't Work Made For Hire.

      And any response that doesn't include the phrase "ask a lawyer" or its logical equivalent should be modded down.

    • Well, doh... we're talking about core duties of his work (!= core business for company), on company time using company resources here, there's not much doubt that by default that'd belong to the employer. What they are basicly negotiating about here is transferring IP rights as a form of wage.

      Internal company information should already be covered by the work contract. So if they want a blanket rule, it can be as simple as this:

      "EMPLOYEE shall own all right, title and interest in any work product, Invention
    • The company can agree that he does own it. If he saigns a contract with teh company that says in essence: "Anonymous guy retains the copyright to all code he writes for company X. He shall have the right to modify and resell it as he sees fit. For this he grants company X a perpetual, non-revokable right to use the code in any way they see fit for any of their projects."

      Some employers that are nice might agree to just that. They don't have to, of course, but if he gets a well written signed contract, it wil

  • liability (Score:3, Insightful)

    by fermion ( 181285 ) on Tuesday September 27, 2005 @06:50PM (#13662647) Homepage Journal
    Of course everyone will say get a good lawyer. Even so, the question is vaild as someone may have some personal experience with this situation, and though a lawyer may know portions of the law, they may not be familiar with unexpected consequences.

    So, here is my question of unexpected consequences. On every job, the code I wrote was the companies, and i was happy with that. The reason was that the company would be liable for any consequences of the code, and I would not have to worry about the code after I left. The flip side is that I could not use the code I wrote, but i could always rewrite if I had to. So, is there any legitimate worry about liability in this situation? Is ownership what one is looking for, or merely a license? Is it better for the company to license from you, of you from the company? This goes beyond the company doesn't own unrelated code i wrote in my own time' to 'I own the code the company uses and paid for me to write'. This seems kind of dangerous to all parties.

  • Am I the only one who thought this was going to be about some guy who wanted to own his own IP address?
  • OK, anyone who read this and thought about bringing in a server from home and running it off your company's bandwidth with a static IP address, raise your hand! ;)
  • "All your code is belong to me."

  • Yeah (Score:2, Insightful)

    by theskipper ( 461997 )
    Get a lawyer. But google up some reading first and maybe even find some boilerplate to get a starting point. Get familiar with the real world issues surrounding employee/employer IP and make a list of nagging questions.

    Lawyers tend to get overly expensive when you walk in and just say "I need a contract for abc" which leads to a lot of back and forth. You need to be integral to the process and do lots of homework. After all, if you end up in court, the paper is only worth what it's printed on if the bas

  • AYB (Score:4, Funny)

    by dcapel ( 913969 ) on Tuesday September 27, 2005 @06:56PM (#13662684) Homepage
    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.

  • Here's what you do .... (Score:3, Funny)

    by telstar ( 236404 ) on Tuesday September 27, 2005 @06:57PM (#13662689)
    Take a normal contract ... and put a "NOT!" after each sentence that sounds like it's somehow restricting your rights. Then, at the very end, put "etc. etc. etc.".

  • What I would do (Score:5, Funny)

    by Stanistani ( 808333 ) on Tuesday September 27, 2005 @07:02PM (#13662720) Homepage Journal
    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."

  • Retain an IP lawyer (Score:4, Insightful)

    by Compulawyer ( 318018 ) on Tuesday September 27, 2005 @07:03PM (#13662729)
    Yes, I am an IP lawyer. However, you will find that any amount you spend getting an IP attorney who represents YOUR interests to draft an enforceable contract will pay for itself many times over just with the prevention of headaches and disputes. You are lucky to work at a company that will allow you to retain ownership in the IP you create. Keep in mind that you have no way of knowing with 100% certainty what the value of IP you create in the future will be. Best to make a small investment now in case there is a potentially large payoff later.
  • Here's a few links I pulled up which should give you an idea of how to write an IP contract, in the event you decide not to pursue legal counsel. At the very least, they can provide some foundation (copy/paste ;p) to writing your own

    Sample IP Contract [utoronto.ca]
    Large List of IP Contracts Between Companies [findlaw.com]
    Another sample IP contract [onecle.com]

  • Unwanted consequences (Score:4, Interesting)

    by steve buttgereit ( 644315 ) on Tuesday September 27, 2005 @07:16PM (#13662793) Homepage
    Chances are that if you get to 'legally correct', you will prompt the other side that they need a lawyer, too. Under those circumstances you may find that the company lawyer has enough objections that you end up without your code (or contract if that's your choice). If the company is small, you may just scare them off altogether.

    I agree, you should consult an attorney (probably labor atty before IP atty), but if the contract is truly informal all the way around (you and company) then take the advice, but don't destroy the spirit of the informality... unless you feel it's the only way to accomplish your goal.

    Keep in mind, too, that you should probably address the company's competitors and how you would treat them if they approached you for anything that could be even construed as business sensitive. If your employer gets to the lawyer phase, this will almost surely come up.

    Cheers!
    SCB
  • From the headline, I thought the guy was desperate for a static address.

  • You may NOT want to hire a lawyer. (Score:5, Insightful)

    by dracocat ( 554744 ) on Tuesday September 27, 2005 @07:17PM (#13662800)
    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.

  • You should leave the company and go find one that's better managed. If management allows you to do things like this, they haven't thought about situations they may find themselves in down the road such as being aquired or taking the company public. That's a red flag highlighting their failure to think ahead.

    Either way, I doubt your employer will be happy when he sees that every piece of software you write has to have a disclaimer attached saying $your_name expressly disclaims any warranties.

  • Don't get a lawyer (unless you want to)! (Score:5, Interesting)

    by Stephan Schulz ( 948 ) <schulz@eprover.org> on Tuesday September 27, 2005 @07:17PM (#13662806) Homepage
    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...").

  • Do you want to own the code, or just be able to use it in the future?

    If the latter, maybe they'll just let you put it under some existing open-source license. There are dozens of them here [opensource.org]; maybe some well-informed slashdotter (oxymoron? nah...) can suggest the best one for the purpose.

    Odds are pretty good that you won't be able to sell your code anyway, not without attracting attention from your (ex-)employer when the stuff suddenly becomes valuable.

  • Read a few example employee [google.com] agreements [google.com] and find one or several which seem to address the issues you have in front of you. Then, as most employee agreements will reserve all rights and property to the company, change the appropriate sections to reserve those rights and property to you, the employee.

    I don't agree with employee agreements. I only sign them because my butt would be homeless if I didn't. At the very core most employee agreements are unethical. Upper HR management knows that employees intervi
  • Nolo Press has a lot of good reference books and articles on this subject. http://www.nolo.com/ [nolo.com]
  • You might consider how you want to "own" the code. If you just want to be able to use it, modify, take to your next job, etc. the easiest thing to do is for the company to open source the code and not worry about the contracts. Consider it a form of shared ownership. This allows you to use it, them to use, and helps everyone. If you plan to make money off of it, well then then often the company wants a slice of the pie since it was done on company time.
  • given a situation at my current company from a while back, where a consultant came in to write some code, clear ownership was not established up front, and when we found a more profitable use for the code, he demanded more money, claiming he wound enforce his copyright to stop us. our lawyer agreed with him. we paid him to do work, and we still didn't own it because we didn't have a clear writing that said we owned copyright of all his work for us. i'm guessing that since you've not signed anything like

  • What I would do (Score:2, Informative)

    by micheas ( 231635 )
    IANAL, but I have had experience with litigation.

    Write down what you want the contract to do in plain English. A list is fine.

    See if the IEEE has a sample contract that looks close to what you want. If so, modify it, if not, look for a Nolo Press contract that looks close to what you want.

    Now, find an attorney that specializes in ip law.

    Show the attorney your draft contract, and your description that you wrote in plain English.

    This should minimize your legal expenses and maximize your chances of getting wha
  • Wink wink, nudge nudge. Say no more! Say no more!

    Honestly, that's the first thing I though of, besides "Who the hell owns their IP anymore, you get that from your ISP!"

  • For me it was a 1-page email (Score:3, Insightful)

    by Spazmania ( 174582 ) on Tuesday September 27, 2005 @09:25PM (#13663488) Homepage
    For me it was a 1-page email from the owner. It said, basically, "For the following list of properties, all copyrights will vest in me directly, not in the company, and I will grant the company an unlimited, non-exclusive license to use them, duplicate them and create derivative works for no additional compensation. For this other list of things, the copyrights will vest in the company and the company grants and will grant me an unlimited non-exclusive right to use them, duplicate them and create derivative works for no additional compensation."

    Worked great. When I eventually left, I walked away with rights to some fine network management and email software that I'm using in my current job.

    One simple thing to watch for as you write your contract: You can't grant any rights to an intellectual property that does not exist. Thus for anything where the copyright will vest in the company, they can't pre-grant you rights; they can only agree to grant you rights later once it exists. Make sure the contract explicitly says that because a pre-grant statement is void; a court will not and can not read it to mean that they agreed to grant those rights later. Even if you never follow through and get them to sign the rights over, the agreement to do so will make it impossible for them to sue -- which is just as good.

    Also note that unless you're a W2 employee, all copyrights automatically vest in you anyway and remain your property until you explicitly sign them over. There are a few exceptions to this rule, but "I signed a contract which says..." is not one of them. If you do your own witholding, you're better off just keeping your mouth shut and letting them think whatever they want. The IP is yours.

  • On fostering good will (Score:3, Insightful)

    by Tominva1045 ( 587712 ) on Tuesday September 27, 2005 @09:57PM (#13663611)
    First tip: don't hire a lawyer at all.

    There are many, many reasons to keep lawyers out of it but these are the ones that come to mind:

    1. With all due respect, given where you are in your career you haven't the funds to pay some non-technical, blood-sucker $400/hr to fill your head with vague answers for months while running up a huge tab and in the end doing everything he can to get you to settle out of court. Sometimes lawyers are necessary- this isn't one of those times (please read on).

    2. If you have only been spending time recently writing this code there cannot be that much of it. What I would do is write a separate document hilighting each class and method that has been written- create an interface specification document that includes a simple sentence on each class and each method and the signature (input/output parameters) for each. Don't rewrite the code yet, just create the skeleton document. Your goal here is NOT to steal proprietary information (and if this is a general web site there isn't going to be anything that's rocket science (no offense intended)). I would bet dollars to doughnuts if you went back and looked at some of that code today you could think of some great ways to re-write it to make it more re-usable.

    In most production environments too much time is given to fixing code when an investment in design up front would have solved many many problems down the line. Once you have the aforementioned interface specification document take it home and write the BETTER code on your home machine, on your own time. This way you aren't using company time or property and since you haven't signed a contract with them they don't currently own the work you do on your own time.

    As an aside, most large companies do make their empoloyees sign harshly crafted intellectual property aggreements that favor the employer. I ALWAYS read these carefully and add an addendum that clearly states I own what I create on my own time that has nothing to do with the company's line of business and I give specific examples of the product areas I'm currently researching.

    3. By letting this thing go- giving the company the rights to this (small) specific code you are fostering good will with them in the long term. Almost no one works for the same company their whole life anymore. You will want good references from these guys when you leave them for the next big thing. After you have honed your skills for a couple of years you will come to see you are being paid 15% or more below what you could get if you moved on to another comapany-- it almost always works that way because companies figure it's too much of a pain for you to leave. You will have to decide if the environment fosters / supports your doing enough development work at home for you to pursue a dream of true independence or if you should leave for another company. Either way you'll want the good reference of some of the people you work with so don't burn the bridges by hiring a lawyer at this juncture. If you do it quickly becomes a you-versus-them environment and they won't likely consider you for advancement if they believe you aren't a team player.

    4. The fact that you realized you bring something of value to the table is fantastic. Congrats on that. Now hone those skills and begin to build some reusable class libraries you will own and can license out to whoever wants to pay for it. If your next employer isn't interested in buying the use of your libraries, contract to them for an hourly rate and charge the hours it took you to develop that same code whenever it appears fitting to slip stream parts of it into their efforts. Along the way you will also learn the art of negotiation- ways of helping clients feel more comfortable that you and careful integration of parts of your code can help them better serve their customers.

    5. Take with a grain of salt any writing that espouses open source. It might seem like a cheery, kum-bai-ya thing to do when you are in your early twenties. But when you're

  • I Ended Up Owning My Own IP (Score:5, Interesting)

    by DoctorPepper ( 92269 ) on Tuesday September 27, 2005 @10:17PM (#13663724)
    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 (Score:5, Informative)

    by mcrbids ( 148650 ) on Tuesday September 27, 2005 @10:32PM (#13663802) Journal
    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.

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