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Screwed Over IP Rights By Your Employer? 115

Posted by Cliff
from the when-contracts-conveniently-get-ignored dept.
VirtualUK asks: "Prior to joining my company, that I've been working with for over a year now, I signed an 'Inventions & IP Rights' contract. That contract stated that the work that I had been carrying out off (and was planning to continue with) of my own back, and in my own time and was my own. At the time the work I was carrying out for the new company and my projects at home were completely separate, however I could see that the company was heading in the area I was working on. Wanting to ensure that everything was kept honest, I reminded them of the work that I am doing and wanted to ensure them that I was not stealing anything from them. What was the response? Basically, that the 'Inventions & IP Rights' contract that I signed didn't count for squat, that they owned anything that had vaguely anything to do with the problem space they were concerned with, and that if I were to use my code in a public domain I could face retribution from the company in the future." When in a situation like this, go to your nearest IP Lawyer for a consultation. Companies that exhibit this behavior are not worth your time or your expertise. With that aside, how many of you have faced this situation? What did you do and how did things turn out?

"I feel sickened, I felt like I had been kicked in the guts, 18 months work for nothing? Not wanting to say the area I'm in, they pretty much said that if they wrote word processors and I made fonts in my spare time that they owned those fonts! I don't think so. So far my options I have considered are:

  1. Carry on working for the company, keep quiet about anything like this in the future and hope they don't try any funny business, but lose my vested stock options
  2. Leave the company, work for another company in a different problem space and carry on my work in my own time, hoping that my old company doesn't try to do any funny business, and lose my vested stock options.
  3. Try and get VC to go on this on my own, but in today's climate, that's hardly likely.

What's the killer is that I have a young family and so I have to ensure that I have an income at all times, but my gut tells me that this is the kick that I've needed to go it alone.

What are your opinions? Anyone know of any good IP Rights Lawyers?"

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Getting Screwed Over IP Rights By Your Employer?

Comments Filter:
  • This sounds like a house painter shouldn't even remotely consider taking up watercolors as a hobby.

    Programmers are professionals. Professionals must maintain and improve skills to survive. I don't know anybody who reasonably expects a professional programmer to not have computers at home because it might be a "conflict of interest." Bullshit.
  • I wonder if this is a job for the EFF [eff.org]?

    ------------------------------------------------ -

  • by Anonymous Coward
    I ran into a similar situtation with a Bioinformatics firm. They didn't like the distributed computing project in which I was involved, as they feared we would solve the protein folding problem, and then they wouldn't own it. Meanwhile, my job responsibilities would have had nothing to with protein folding, nor were they silly enough to throw venture capital at it, but since they were in "Bioinformatics", they couldn't stomach the idea of any employee having a hobby in even the same branch of science.

    As a result, they lost out on my skills. But since I learned during the interview process that one of their top people honestly thinks computers will be able to simulate proteins accurately and comprehensively in 3-5 years, I'm pretty glad I said no. That's just nuts.

  • I don't know the specifics of your option agreement, and I'm not a lawyer (though I am a venture capitalist), but you might be able to preserve your vested options via what is known as an "83b election."

    This allows you to exercise your vested options (even if the stock is not yet traded publicly), which means that you own them outright, even if you leave. Also, it allows you to take capital gains tax treatment of any increase in value in your options (as opposed to standard income tax treatment), which can potentially save you money in taxes, depending on your bracket.

    However, exercising your options means writing a check for the number of vested options * strike price. That can be a big check, and if the company goes under or never goes public/gets acquired, you may never see that money again. Also, it can have severe tax implications depending on the circumstances surrounding the value of those options depending on what happens to the company.

    Before you even THINK of doing something like this, talk to a tax lawyer/accountant first. Also, your company may or may not allow this sort of thing.

    I've never done one of these myself, but I know people who have. Just an option. Use this advice at your own risk.

  • Thats a pretty bad lawyer that would have allowed his client (your old boss) to sign something that even he didn't understand the ramifications of. Sounds like my lawyer.
  • Am I mistaken, or is this another one of those situations where somebody's asking Slashdot when they should really be talking to a laywer?

    Remember folks, this is the *LAW*. It has nothing whatsoever to do with who's right and who's wrong. It depends 100% on who can establish that their actions are valid based on current statutes, period.

    (If you factor that figuring out exactly what those statutes are and how they will be interpreted by a judge takes time and money, then the depths of the participants' pockets factor as well. The poster, in this event, may merely be S.O.L.)
    --
  • by Anonymous Coward
    I recently started a new job and they presented me with the same type of IP contract my first day. The timing was great because I had just read a slashdot article regarding this, so I was carefull to read the entire contract.

    I feel fairly comfortable in my interpretation of the contract. Basically The company owns anything I develop for them (of course), and if I - even in my free time - begin creating something that Is closely related to the type of work they are in, they own that too. However, previous "inventions" I maintain the right too, and If I ever bring those previous inventions into work I am doing in the company, they receive the ability to use the software in any of their products "royalty free" etc. It sounds reasonable to me.

    My point is. Even though the contract "looks" ok, from my inexperienced interpretation, I still wouldn't feel completely safe if my "prior inventions" were closed source.

    But since everything I've written, and will write, is GPL'd I don't have to worry. They can have "royalty free" rights to my work, I don't care, they still have to abide by the GPL... And that goes for any projects I start on my own time! End of story!

    I wouldn't feel as protected if I chose to release my code under the BSD license, because they can take their royalty free license after I leave,pour work into it, and in a year I see my program released as a closed source application! Not Good! If I'm going to let people modify my source etc. I wan't to see what they do! it betters my learning and rewards my efforts.

  • Whatever you do just make sure that your code isn't sitting anywhere on their machines whether it's just for convenient backup or any other reason. If it is, and especially if they have it on their backup tapes, your case will probably be a lot more difficult.
  • Where do I sign up? =)

    I've yet to work for a company where any knowlege of my off-time projects proves to do anything but cause them to cringe. It seems, that any imagination used outside of the company's walls is just "wasted"... or so I've experienced anywhere I've worked. Even the technical manager's I've worked for are far more interested in the bottom line of a company, than the joys of developing.

    But it seems I've only had negative experiences on this issue...

    bummer.
  • You want answers watch Jeopardy - you want miracles talk to God.

    Seriously, talk to a lawyer.
  • by dstone (191334) on Friday March 09, 2001 @10:32AM (#373550) Homepage
    Here's the opinion of an employer and a passionate software developer...

    You're giving really lousy advice to a software person. When I interview developers, one of the best filtering criteria I've found for getting hard-working, passionate, motivated developers is to ask them what kind of projects they've got going in their spare time. I'm not looking for conflicts. I want to hear about something. I'd rather not hire the person that says "software is my 9-5 job; I don't dabble at home". I enjoy seeing someone's eyes light up and get all excited telling me details of some mad-scientist project they're brewing up (that will probably never be completed), etc. Hell, tell me about side projects that failed. What did you learn? That's the kind of employee I want. He's into tech. He loves it. He lives it. He'd be doing it anyways, even if it wasn't his profession. If the work I give him is boring from time to time, he doesn't feel like his job is the only outlet he's allowed for tech challenges or expression.

    The most significant risk I've come across: People will work on their own projects on my time. Very possible. And yes, I've received legal and management advice that I complicate the employment relationship by hiring this type of person. That advice should be respected. In the end, it's a calculated risk. What's my upside as an employer? I get a hard-core developer that (hopefully) respects his employer for not stifling him. I've increased the chance that he's happy on the job. He may go so far as to refer his colleagues and friends. Gimme.

    In the end, software development has a lot to do with growing, changing, techniques, lateral thinking, staying sharp. I can't offer challenges to everyone I hire on all those fronts. So I'm not going to stand in their way if they do it on the side. Issues can and have come up. But it's a net positive, so far.
  • No, the situation was very different.Here the company is trying to go back on what it agreed to. IMHO he needs to talk to specialist in both IP law and labor law.

    Ahhhhh ...

    The flip side of the coin, but still perversely connected.

  • by Anonymous Coward
    No. the 83(b) election only relates to when the options at issue become the the employee's property for purposes of (federal) tax law. It has nothing to do with whether or not the options are actually vested. And IAMAL.
  • It is probably too late to do much about it now. You said that the "contract stated that the work that [you] had been carrying out off (and was planning to continue with) of [your] own back, and in [your] own time and was [your] own." How did you know? Did you consult a lawyer? Your employer did. All employment related contracts are one-side: They are written to protect the employer, and not the employee. If you thought your work was valuable, you should have taken the contract to an IP lawyer in the first place. It would have been cheap, and you would have saved yourself a lot of trouble (and money). However, if you came back with a redlined contract, you would probably not have gotten the job in the first place.
  • Trouble is, that only works if the owner of the GPL'ed code has the resources and the desire to litigate. Plus, AFAIK, the Gnu GPL has ne'er been tested in court. Remember: it doesn't matter what the liscence is as much as who is behind it.
    _____________________________________________ ________________
  • by Anonymous Coward
    If you are a California person, also read Section 2871 (they can't fire you/refuse to hire you for refusing to sign an invalid agreement) and, especially Section 2872 (they MUST warn you about Section 2870 in the agreement). IAAL. BTW, here is the text of 2872: 2872. If an employment agreement entered into after January 1, 1980, contains a provision requiring the employee to assign or offer to assign any of his or her rights in any invention to his or her employer, the employer must also, at the time the agreement is made provide a written notification to the employee that the agreement does not apply to an invention which qualifies fully under the provisions of Section 2870. In any suit or action arising thereunder, the burden of proof shall be on the employee claiming the benefits of its provisions.
  • He is competing. In business all is fair just ask MS. This is how businesses operate in this day and age no ethics, no morals, just profit and shareholder value. Just ask Firestone, Microsoft, Exxon, Nike etc.
  • Where I'm from (Sweden), health care is free, which is quite good if you're a contractor.
  • by elegant7x (142766)
    good point...

    Rate me on Picture-rate.com [picture-rate.com]
  • by Anonymous Coward
    Independant contracting can be great if ... you can get your customers to pay their bills. When I got out of college 16 years ago, I had a great job for 6 years. After that ended with the death of the founder, I've had terrible experiences with employers. For 10 years (will be next month), I've worked as a contractor for about 3/4 of the time. During that time, I spent more time collecting than I did working hourly on billable time. It's amazing how long it can take to get to the right person to talk to at a large telco about getting a check written. Add in travel time to go back and forth between Atlanta and Dallas (hq's of the two companies I've done the most work for) to try and collect and unpaid travel expenses, and I haven't made a dime profit of off them yet. Let's see, on the check I collected today, I did 78 hours of work at $165 per hour for a total of $12,870. I probably spent $700 on long distance (about 50% work, 50% collecting), and had over $6,000 worth of travel expenses that probably aren't going to be reimbursed. I finished the work 19 months ago. That leaves me with $6,170. Well, your probably thinking, that's not bad for a month of work, but it's depressing when you think of how long you have to wait to maybe get paid. I'd rather have $2,000 now rather than a chance "to win the jackpot" with a telco 1 1/2 years later. Contracting? Absolutly sucks unless you are lucky enough to find the right customers who will *pay* their bills.
  • Ok, here's what you really need to do. Forget the lawyer. Costs too much and you get nothing in return. You get a good quality Colt Commando on the black market, plenty of ammo, and a few grenades. Then you walk in and knee cap anyone you dont like, but be sure to aim for the head for the management types. See, at least you get a cool machine gun out of that equation.

    If you don't wish to heed that advice, (and dont blame me if you do go that crazy) just walk away. Self employment is the only option these days... we all secretly know the big corps can crush any small business in an instant. And we still havent forgot about SLASHDOT SELLING OUT. That was the beginning of the end of the world for us all.

    -=Gargoyle_sNake
    -=-=-=-
  • Why do you lose vested options, simple. In my case the company wasn't public nor even funded in any real way. When I quit I had 90 days to purchase 10s of thousands of options at $1 per. I could have done it but it would have wiped out my savings completely. I concluded that the risk was too high. I could have exercised some portion if I wanted to as well but I opted to invest the cash instead, safer but lower potential return.

    For someone with limited funds, I can see that in a pre-IPO company you just can't afford to spend the $s necessary to purchase your options.

    In a public company, if the options have any value then you will always buy them because you can always sell enough to purchase the rest.

  • > Just as a side note, you're probably going to get sued. And they're going to win. Sorry.

    First of all, there is the matter of juristiction. This is set in Scotland, where the laws are a wee bit different from USA.

    Second, if a lawsuit were to happen, it would be us sueing him (our salary checks all bounced, which is why we left).

    > Still amazed at the sleazy shit people try to get away with,

    Yes, based solely on what I wrote above, my actions do look sleazy, but this was in the context of a company that wasn't paying taxes, wasn't paying suppliers, a director that was embezelling money, and clients literally in tears. In view of all this I thought I'd better make sure than when I left, I could salvage some code.
    --

  • In the US it is *not* a copyright issue. It is an employer/employee/state issue. There is no general answer, except that if you live in progressive states, (CA and WA for sure, others also), that have passed laws prohibiting agreements like that, you are basically free and clear. Otherwise, it doesn't matter, the employer *owns* you.
  • by FTL (112112) <{slashdot} {at} {neil.fraser.name}> on Friday March 09, 2001 @09:39AM (#373564) Homepage
    IP agreements can go both ways. When I was working for a rather evil and unprofessional company, I wrote my own IP agreement. It stated that all code belonged to the company except code that was [insert heaps of technical jargon]. Neither the company director nor his lawyer knew what I was talking about, but the exception sounded pretty obscure.

    When I (and all the other employees) resigned from the company simultaneously, I took absolutely everything. Seems I'd burried something about files that were o+r deep in my technobabble. This code came in handy when we immediately setup a company in direct competition to his.

    Still laughing...
    --

  • something owned by FSF? At least they probably have the resources..

    //rdj
  • Of course, this guy doesn't need the CA law because he has a contract that says the same thing.
  • by www.sorehands.com (142825) on Friday March 09, 2001 @09:39AM (#373567) Homepage
    The issue would not be of what you did before you were employed, but only from the point of when you signed the contract.

    The real issue, is not the rights, but how much are you willing to spend to enforce those rights.

    You can wait for the employer to file suit, and then defend on the basis of prior disclosed work.

    Talk with an IP lawyer now. Also, keep version control, or some sort of logs of when you did what.

    You might want to license some of what you have done to them, if what you did would help your work. Put it in memos, "I did this X years ago on my own Y, do you me to go and find that code?"

    Also, I used that attitude of theirs against MSI [sorehands.com] when the WC insurer claimed that my tendinitis was from my computing at home, not from my computing at work.

  • but get ye to an attorney now. An IP attorney in particular. Have him evalutate the contract before you do anything else. I realize that this is a difficult time but unless you get a qualified opinion first, everything else is just bunk. No VC, even back in "the good old days", is going to invest in a company with legal action hanging over it's head. Most times I would advise people to work with their employer on sticky issues like this but it sounds like you're working for a bunch of dicks.
  • And we wonder why other companies are paranoid about IP agreements?? (Geesh... if a company is so bad you want to rape it's IP and compete, why do you want to carry their baggage with you and prolong the association? Go out on a limb for a few months to develop a better product and compete in the clear! If you can't get funding and can't stand to miss that weekly paycheck while you're doing it, well then maybe you don't have what it takes to market your own IP -- in which case you may want reconsider the worth of the risks taken by the people who started up that big, bad, oh-so-evil company you just left.)
  • Youre wrong. Nothing will happen. Words are words. He didnt have to sign... And all quitting at once? Cool, man!

  • First, I'd write down _explicitly_ what you have been working on for the last few months, both on and off the job. Clearly state how there is no overlap, and how you took initiative to explore strange new worlds. Send this to your boss so that it is "on the record". If it goes to court, this will look good.

    After you write this stuff down, you should also get it notarized. For only a couple dollars, this will stand up better in court and provides a specific date that cant be argued. This is especially important if your company is heading in the direction of your work. If you get your docs notarized before the company mirrors your hobbies, you have the leverage.

  • If you're a house painter, I'd recommend against watercolors as a hobby. Why? Maybe it would be nice to do something else for a change, instead of just futz with paint.

    I AM a professional programmer, and I DO have computers at home. I even maintain and improve my skills on my home computers. I DO NOT, however, program at home for ANY purposes of developing real software packages. I learn, I train, I familiarize. I do NOT build and deploy. I do NOT market and package.

    There's a BIG difference between skill maintenance and learning and spending your off hours developing code your employer wishes you had developed on their time.

    It's really VERY easy to avoid IF YOU WANT TO.
    Those who do otherwise do so at their own peril.
  • Excuse me for saying so, but along with bogus patents, this is starting to look like the business theme of the new millenium: "What's mine is mine, and what's yours is mine. As your employer, I own the rights to your thoughts."
    Something's gotta give!
  • Names are not as important as places. It is literally *impossible* to give advice without knowing what laws apply in the locale in question. It is entirely possible that the IP agreement was completely null and void from the get-go, depending on where you live!
  • Responses, in no particular order...

    1. Hogarth describes the death of open source software as people stop working on the "fun stuff" when the work day is done because of a fear of a conflict of interest

    2. Only work in a job you hate otherwise you might be tempted to try something similar in your off time

    3. If you can't convience your company to try a "crazy new idea" don't try and implement it yourself

    4. Only lawyers can solve problems

    I'd like to try a counter suggestion: Work for a company that values your intelligence, creativity, and motivation. Talk to friends, coworkers, ex-classmates and offer your services to the companies that have a reputation for fairness. I'm sure their are a couple of them out there: maybe a software engineer like yourself started a company for the express purpose of having a nice place to work. Maybe that means taking a slight pay cut. Maybe that means you don't get a foosball table in the break room.

  • I know this concept will get flamed pretty badly, but one of the reasons why there is a concept of intellectual property is that not all people out there in the world are, well, nice! Like a nuclear weaspon, a patent can also be used for good and for evil. What isn't "fair" to most /.-ers is that a patent prevents use without permission of the patent holder. In my personal experience, the commercial world is full of ruthless competition, and patents can be really useful in making sure your competition doesn't screw you -- esp. if you're competing against larger companies (who'll remain nameless, but you can probably fill in the blank.)

    There are a whole range of behaviors, ranging from "use this patented code but don't change it w/o my permission" to "Don't use this code unless you pay me an unreasonable amount of money." Most of the time, depending on how useful your code is, there's a middle ground.

    What you might think about, because it'll be much less expensive for you in the short term, is letting the company patent your work BUT also make sure that you still have the ability to use to code with very favorable licensing terms. Then, propose to strike out on your own, offering the company the ability to both invest and outsource the development. It's a win-win for both you and the company.
  • IANAL, but ...

    Have you been documenting your work as you proceed, with dates?

    Get a lawyer to read over your IP agreement and see what he says about its validity and if it is valid, then I would simply quit, move to another job , and continue in your work, publish it in the public domain just as you had planned and if they come after you get yourself the same lawyer.

    This will prove several things in the eyes of the court:

    A) Due dilligence, you found a legal opinion as to whether something was valid, and even if it isn't, you sought a professional opinion which is often enough.

    B) The dated documents prove that you had conceived of the items in your own time. And if it doesn't you can file a suit against them asking them to pay you for the time in which you conceived of the idea, 18 months = 540 days so 16 hrs * 540 days = 8640 hrs * (I'm guessing 40$) = $ 345600. They wanna claim the ideas are theirs than they should pay for them.

    Anyway, just my $0.02.
  • Free long distance :) If you're paying $700 in phone bills you could probably get one of those 'super-biz-rate' plans for a $100/month or something

    Rate me on Picture-rate.com [picture-rate.com]
  • Why the hell is that?

    If you release you code to open source GPL, I don't see how you can yourself benefit financially from doing that; sure, it's nice for everyone else to have access to the code, but the person that programmed it does need food and shelter, you know.

    I don't see open sourcing something because you feel forced to as any different that what this company is doing to this guy...unless someone can explain to me how someone can benefit financially from open sourcing their own software...

  • You miss the point: the IP agreement was that the stuff was *HIS* and now the company says that they want it. If he's in a state with Ip agreements, then he's on solid ground. if he's not in a state with IP agreements, then the company has no right to the stuff anyway.
    ----
  • Not true.

    The U.S. Federal Government can pre-empt, and has in fact pre-empted, much of the field with the patent and copyright laws.

    But IP, as a general concept, is far broader than that. The individual states can and do pass laws governing trade secrets, trademarks and trade names, invention ownership (what we're talking about here), and many other areas that would fall within the catch-all of "intellectual property."

    To give one example, California Labor Code sec. 2870 states:

    "2870. (a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either:
    (1) Relate at the time of conception or reduction to practice of the invention to the employer's business, or actual or demonstrably anticipated research or development of the employer; or
    (2) Result from any work performed by the employee for the employer.
    (b) To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is against the public policy of this state and is unenforceable."

    California has made the worst of such employment agreements unenforceable, but there's still a lot of room for an unscrupulous employer to maneuver. Subsection (1) is a real zinger.

    IAAL, but this is not legal advice. ;)

  • by dkusters (2770) on Friday March 09, 2001 @10:43AM (#373582)
    California is a beautiful place to work sometimes. According to the California Labor Code section 2870:


    (a) Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either:
    1. Relate at the time of conception or reduction to practice of the invention to the employer's business or actual or demonstrably anticipated research or development of employer.
    2. Result from any work performed by the employee for the employer.

    (b)To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is against the public policy of this state and unenforcable."

    So, if you work in California, you have additional rights. As long as your work is not in direct competition with your employeer or your work began before you knew your company was moving in that direction, you are probably safe.

    Dave

    P.S. IANAL, but I play one on the net...
  • With all due respect, bunk! This is like saying that you don't need a lawyer at a closing for the sale of real estate, because if you need a lawyer, the house itself is suspect. Or like saying that you don't need to enter into a contract ever, because if you are memorializing an agreement, it presumes a lack of trust that precludes entering into it.

    This isn't a question of trust, its a question of knowing what your rights are --having a reasonable amount of information-- when you go to a negotiation.

    The author of the question needed a lawyer. This wasn't a question of trust by any stretch of the imagination, any more than his asking the question of the Slashdot community indicated he didn't trust his employer -- it was a question of knowing where he stood.
  • I'm advising you not to do this unless you have alot of guts it's also illegal.

    You have been at xyz firm for 18 months In internet time that's about 2-5 years of trust. It seems that you should have some High level contacts and access.

    1) find out there human resource proceedure and storage system ( make sure you know how many copies there are )

    2) raid your file for the documents you need

    3) find the originals (ip documents), copy them, then trash them or copy them and take out your signature replace with the unsigned copies where ever there was a copy.

    Unsigned copies are the best way because that can lead to clerical error ( whom gets the blame )

    4) stand pat and wait 3 months

    5) quit

    Now I don't advise you to do this, but if you do their is your basic plan.

    Now if you need an IP lawyer drop me an e-mail, I got about 3 that charge very nicely ( about 150 - 350 hr )

    ONEPOINT


    spambait e-mail
    my web site artistcorner.tv hip-hop news
    please help me make it better
  • You're right. And there was one particular good response to that article: I am a lawyer... [slashdot.org]

    I guess the reason why this subject comes up more and more frequently is the fact that we programers don't care about the details of such contracts until we are bitten by them.

  • March in there and slowly beat these people until they beg for death.

  • You definitely are not a lawyer. A contract may be a contract, unless the courts decide otherwise.

    The courts are free to say something is unreasonable, illegal, unenforceable or whatever. And they're quite enthusiastic about saying that sort of thing. Now, he's lucky that in most cases the courts say these sorts of things while siding with the employee, but he cannot assume he knows whether his contract is binding.

    It's not even a question of breaking the contract. It's a matter of who owns the IP rights to some bit of code. Jeez, how did this get modded up? "Hey, he says what we would like to be the case, and mentions open source to boot."
  • I always thought that if you GPL'd your stuff, ESR or Linus or CmdrTaco or somebody would come and financially support you for the rest of your life. Why wouldn't anyone want to do this?

    Oh wait... that was just a dream I had.

    Mordred
  • by Anonymous Coward
    The HR guy should have checked with his superiors. Crossing it out is fine. That's how edits to contracts get made when one wishes to avoid paying lawyers for another hour of "work".
  • Apparently they have good IP rights lawyers...
  • by cavemanf16 (303184) on Friday March 09, 2001 @09:24AM (#373592) Homepage Journal
    I would suggest striking out on your own, but I don't think this will make your problems go away. In fact, I bet it would just make them worse because then the company could say that the work you developed for your new self-owned business was actually theirs, and that you were in effect, stealing.
  • by Alien54 (180860) on Friday March 09, 2001 @09:25AM (#373593) Journal
    Granted, it is a good topic for discussion, but didn't we have this same debate in a weekend story? ...

    Let's see, here it is:

    it is an Ask Slashdot article: "When Personal Projects Start To Conflict w/ Work?" [slashdot.org]

    Not an exact repeat, but it seems pretty similar.

    Okay, well I said my bit there, so I'll pass on this round.

  • I have done this on employment contracts, leases, and rental agreements. I have been advised by a lawyer that if the other person accepts the modified contract and the transaction takes place, then it will hold up in court. I have never had to test it.


    OpenSourcerers [opensourcerers.com]
  • To follow up on my own post... I was also told by the lawyer that the other person does not have to initial the changes. They are supposed to examine the returned contract before accepting it. YMMV.


    OpenSourcerers [opensourcerers.com]
  • there are two other problems with working as a contractor - having to acquire an accountant to make sure you doesn't owe an insane amount of money at the end of the year, and having to get decent health insurance to cover yourself and the family.

    years ago, i was a contractor as well, and i lost a great deal of money while trying to obtain appropriate insurance coverage for myself - and paid out my savings when paying taxes. so be careful before you jump that fence...
  • by Anonymous Coward
    I think his point was that most stock option agreements have the provision that termination for cause prevents you from exercising options that have vested.

    Quitting, getting fired, and other methods of leaving the company generally give you some period of time (30 days? 90 days?) during which time you may choose to exercise any vested options. If you haven't exercised them by the end of that time period, then the unexercised options disappear.
  • by Enry (630) <enry&wayga,net> on Friday March 09, 2001 @09:27AM (#373598) Journal
    Documentation is key here. Make sure you have everything in writing, including the fact that they think they own your work. This doesn't sound like an IP issue, but more of a contract issue, since you both signed a legal document saying your privately-done work is owned by you.
  • by xyzzy (10685) on Friday March 09, 2001 @09:27AM (#373599) Homepage
    First of all, in choice (a), why would you lose your vested stock options? In all the options agreements I've ever read, you will only lose them if you're terminated for cause. They can't take them from you otherwise.

    Next, think of things this way: If you can't go with option (c) you're probably not going to get very far. You've pretty much said that you are not in a position to capitalize on what you've been developing, due to the risk involved (family, etc). So what are you losing? If the company starts working in your area, as long as they aren't STEALING what you did, you can certainly influence what they do and probably contribute to it. And, be happy that you're working on something you're interested in. It's not the end of the world! They are just in a better position to capitalize on it than you are.

  • by n7lyg (219105) on Friday March 09, 2001 @09:47AM (#373600)
    Your options depend heavily on exactly *where* you live and work. If this is a US company, which state is it in? If it is CA, WA, or a few others, IP agreements are NULL AND VOID. Search the old Slashdot files for the last time this question was asked and follow the links in that discussion for a list of states which have laws preventing IP agreements from being enforceable. If you live in a country other than US or in a state with enforceable IP agreements, good luck! You will need it!
  • argue about our lifestyles
    no proof about skills
    move along, silly person.
  • by Anonymous Coward
    I've actually had this happen. I was creating the SPIRO-Linux Distro, and when I left, tried to develop my own embedded linux product (which was going to be handed out to anyone who asked..ala GPL), they sent lawyers after me claiming that deeplinux (www.deeplinux.com [deeplinux.com]) belonged to them. I provided diffs and everything.. but they kept on.. I had no money for my own lawyer to dig in after them, and I also have a young family, so I had to drop my product line. I really hate seeing this happen to people....
  • Basically, what you're saying is that you've been doing some "pretty cool" stuff in the evenings and now the company your are working for is moving in that direction. This is common. I'm not a lawyer, but here are some thoughts:

    First, I'd write down _explicitly_ what you have been working on for the last few months, both on and off the job. Clearly state how there is no overlap, and how you took initiative to explore strange new worlds. Send this to your boss so that it is "on the record". If it goes to court, this will look good.

    Second, Ask them to put in writing what they interpret the off-work clause to mean. If they don't want to explain their legal agreement, you are dealing with bullies -- leave immediately. Respectfully disagree in writing.

    Third, ask your supervisor what the options are. There are a few I can think of: (a) Perhaps they can *purchase* the rights to your evening work, (b) You can make sure that your exposure within the company stays _far_ away from what your evening work is doing (refuse to go to meetings that would be a conflict of interest), (c) You should ask for a raise if they want you to work in the area you've been studying the last few months.

    In general, companys are willing to work with you; the legal costs can be 10-60K to raise a law suit. So, as long as you're cheaper than that... you don't have a problem. Well. Hope this helps. -- Clark

  • by iomud (241310) on Friday March 09, 2001 @09:48AM (#373604) Homepage Journal
    Sneak in some GPL'd code and say "whoops how'd that get in there." (while simultaniously raising your pinky to the corner of your mouth)
  • This is a little bit of a flame -- but I think there are some merits to my comments.

    I know many, many slashdotters would probably encourage someone to continue growing and expanding their chosen field in their off hours. This post, to me, suggests exactly why NOT to do that.

    Work each day -- and do the work of your employer. When you go home, do something completely different. DO NOT PROGRAM. DO NOT DO ANYTHING EVEN REMOTELY LIKE YOUR EMPLOYER. If you program during the day, write haiku at night, or something -- anything -- different. Fingerpaint. Watch Babylon 5 until you barf.

    The easiest way to avoid conflicts of interest is TO AVOID CONFLICTS OF INTEREST. Don't dip your pen in company ink. Don't dip your pen in ANY INK that the company may EVER be interested in.

    Otherwise, when it comes time to making hard choices, call your lawyer up and for god's sake, stop asking Slashdot. You should know better.
  • by TechLawyer (182030) on Friday March 09, 2001 @09:50AM (#373606)
    Your Inventions & IP Rights agreement is a contract, and any competent contract lawyer can give you advice about it. Beforehand, though, I'd ask if he knew about "shop rights", and if he can't answer, find another lawyer. ("Shop rights" are rights your employer has in inventions you make on the employer's dime in the absence of a specific contract to assign those rights, and are unlikely to be involved here, but your employer may assert them anyway.)

    Who at the company told you the contract was worthless? Managers often talk tough, particularly if they don't know the law. HR deals with legal issues in more depth, and if you talk to them, they may be more rational with regard to your contract.

    With regard to just not saying anything, you may find yourself in a situation where you may be competing with your employer. I don't know if you signed a noncompete agreement, but that may become an issue.

    If you are serious about continuing with your work, I would seek out a reputable lawyer (not the one on the corner in the mini-mall) in your area. One key to finding a reputable lawyer: don't go with one who wants to charge you just for finding out what you want him or her to di.

  • by JimCYL (319191) on Friday March 09, 2001 @09:50AM (#373607) Homepage
    Well, it sounds to me like you have a couple of good contract based defenses. While IANAL just yet, and I haven't actually taken a look at your employment contract or the IP rights contract, you are probably alright, regardless of whether or not your company tries to bully you. Generally speaking, when a company tries to crush an employee on some ground like "he's stealing our trade secrets" (which often happens in cases like yours) courts are very employee-friendly. Based on what the contracts say, a court may severely curtail the scope of any provisions you signed regarding the company's ability to prevent you from practicing your particular profession, or it may simply find such a provision completely unenforceable. Here's a good quote from the New York Court of Appeals: "Therefore, no restrictions should fetter an employee's right to apply to his own best advantage the skills and knowledge acquired by the overall experience of his previous employment. This includes those techniques which are but skillful variations of the general processes known to the particular trade." (Reed Roberts Assoc. v. Strauman) This case dealt mainly with a company's attempt to stop an ex-employee from practicing in his field of expertise on some kind of "misappropriation of trade secrets" ground, which the court pretty much rejected. However, courts do sometimes enforce noncompetition agreements (i.e. I, employee, agree not to compete with employer for 12 months after I leave my job) if the terms are reasonable an don't unduly burden your ability to make a living in your chosen field. Basically, this really is less of an IP dispute than a labor law dispute. I suggest talking to an attorney and showing him exactly what you have signed and so on. Doesn't have to be an IP lawyer, though. This has less to do with patents, copyrights, and trademarks than with the terms and enforceability of the contracts you signed.
  • The company produced the conflict, not him. From the article:

    ... however I could see that the company was heading in the area I was working on.

    The company was informed about what he was doing, and management still chose to go into the area where VirtualUK was working. This means that any conflict is due to the company's actions, and they have no business claiming any ownership of VirtualUK's work. If anything, the company is trying to mis-appropriate V's work under false pretenses.
    --
    spam spam spam spam spam spam
    No one expects the Spammish Repetition!

  • IANAL...

    I signed an 'Inventions & IP Rights' contract. That contract stated that the work that I had been carrying out off (and was planning to continue with) of my own back, and in my own time and was my own.

    It seems that an IP lawyer should be able to use this to beat the company over the head as long as you can document that (1) you started your project before starting employment and (2) there's no evidence that you did work for your project on their time, e.g., performance reviews wondering why you seem to work furiously yet get nothing done.

    If I was in your shoes, I'd want all of my options AND no more to do with this company.
  • By this logic, Apple computer would never have come into existence. I know not all of you may consider this to be the gratest tragedy on the face of the Earth, but I think that this approach can safely be classified as A Bad Thing.
  • ...if a company hands me an 'Inventions & IP Rights' contract to sign, I'll invent a novel way to destroy the contract without signing it.
  • Damn I wish I had some mod points, this is ingenious.

    The companies, in order to take credit for your work at home, ought to be LIABLE for you when you work at home. If you're even THINKING about work while skiing, if they own your idea, THEY OWN YOUR GOD DAMN LIABILITY when you break your leg because you were so excited about the idea you missed the tree!

    Bryguy
  • About two years ago, I started work at a major PC manufacturer in Texas (well, that narrows it down to 2, doesn't it). When I was handed the IP agreement to sign, I requested an audience with the HR and legal people to discuss my options, as I had other projects that I didnt want the company to have claims to.

    Since the side projects did not directly have anything to do with my job description, all they asked was for some proof that I actually was doing what I said...so I produced a website and some incorporation papers, and that was that...they made a note on my contract, and I signed it.

    About 3 months later, the company announced it was developing new products in line with what I was doing. In a pre-emptive measure, I approached Legal again to solidify my claims, as I was starting to make some good money on the side.

    They didn't flinch, and said I was still free to do what I wanted. I think they really (and realistically) did not consider me any sort of threat, or potential competitor (just me and my partners can't compete with $32B/year company). Legal said my up-front disclosure was a wise idea on my part.

    I quit there after a year for unrelated reasons. Incidentally, since then, a group of about 40 current employees there have formed a very profitable company in competition with those new products (which are failing miserably for the company....Quality still matters, folks), and they do so with the company's knowledge, even as they plug along with their dayjobs there. I think the guys in the startup are hoping for a buy-out.

    Anyway, it's not exactly what you have experienced, but my advice is to disclose your projects up-front, and avoid any claims on you in the future.

  • IANAL, but I know that in California any invention you produce on your own time without using your employer's facilities is yours. Unfortunately, not all states are uniform. My guess is that Texas probably lets employers claim your first born if it makes them money, while northern and western states are more restrictive on Nazi IP agreements.

  • This is probably verging on "off-topic", but I'll take the hit...

    You're right. HR people and recruiters, in my experience, don't always get it. Some do though. But there's just not a lot of high-paying professions that naturally spring out of a childhood hobby, so I can see the logic behind their skepticism. Hell, maybe they're envious. Just act sincere and don't be a dink. Those people can make or break your first few placements or contracts. After that, your reputation will speak for itself. Some industries within software seem more or less respectful of the hacker-grown-up concept. Games has traditionally been a receptive place to start (and end!), though even that is changing. There are others. Be persistent. Talk to employees. Talk to employees. Talk to employees. That will give you a good read of their employers. It looks like you're already doing short-term contract work, and that's probably a really good idea for a while. Maybe forever.

    Re/ the CS degree thing... I personally did one not to increase my job prospects, but because I was interested in it anyways and wanted to get some structure under my belt. I think a degree can accelerate otherwise pretty esoteric or non-intuitive stuff to a hacker (examples for me were compiler design, OS design, non-imperative/procedural languages, and yes, "software engineering" with all its life-cycles, estimations, metrics, paradigms, etc.) I think a degree in CS is a good thing, all else equal. Unfortunately, all else is not always equal.
  • On what grounds would VirtualUK sue his employer? I don't think you have grounds for a suit merely because your employer makes incorrect statements that it owns something which it actually doesn't own. For example, so far as I know, you can't sue your employer for erroneously stating that it owns your house or car.

    Of course, if the employer actually starts using your house and car as if it owned them, you'd have grounds for a suit. It sounds like VirtualUK's employer is not actually presently making use of his code.

  • i've heard that before, that if you make a change to a contract, as long as both parties initial the changes, it's valid.

    ianal...
  • Slashdot needs to switch to Verdana
    No, *you* need to switch to Verdana.
  • by latneM (7876) on Friday March 09, 2001 @09:28AM (#373619)
    The IP section of the agreement from a previous employer basically stated everything you did was theirs. They specifically mentioned on your own time with your own equipment as still belonging to them. Bad stuff.

    This company had know-little HR people go over the substantial amount of paperwork with you and a fellow cow-orker used this to his advantage. He simply wrote a huge X over that section and wrote his initials. The HR guy stated, "Hey! You can't do that!" to which he replied "Yes I can". I have no idea if it would ever stand up if contested, but I do beleive it removes this companies rights to his IP.

    Standard disclaimer: IANAL, please consult your own legal counsel on these matters.
  • Just as a side note, you're probably going to get sued. And they're going to win. Sorry.

    The rule for a contract is that there has to be a "meeting of the minds" both sides have to *understand* what the contract means. If you're signing something that you truly don't understand, and the other side deliberately obscured the meaning, you can actually get out of that contract. Not to mention suing your ass for raiding (for taking the employees as a group), misleading your previous boss, and breach of fiduciary duties.

    Although I'm not an employment lawyer (but hey, I do have a J.D. so I can give actual legal opinions) if I were you I'd hire myself a lawyer fast, because that suit is just around the corner...

    Still amazed at the sleazy shit people try to get away with,

    Thalia
  • Aside from talking w/ an IP lawyer, ASAP, I suggest going back and taking a REALLY close look at anything else you've signed. Make sure you didn't screw yourself over inadvertantly. Check and see if they've gotten you through some other loophole. Who knows what they might have managed to slip by, elsewhere.
  • it makes a difference whether or not your company ALSO signed the contract. Otherwise, it's just a document that states what your views were, and isn't an agreement since nobody representing your company signed it.

    This is a really good point. I guess we just assume every time a company hands us something to sign, they're implicitly agreeing to be bound by their own terms. A bad assumption.

    What I would like to know is: what rights does the law give employers in this regard, assuming there is no contract (or a limited one) between the parties? Naturally, as the creator of a work for hire, you can't do anything with the code you write for a company, but absent a contract, is there some sort of implicit 'anti-competition' agreement between employer and employee that prevents employees from doing independent work in a similar space?

  • Not true. It is not necessary to sign contracts for them to have effect. What you need is offer, acceptance and consideration. Consideration is not at issue here, in an employment contract, one side is (at least) offering work and the other side is (at least) offering payment. The IP rights document provided by the company would be a part of their offer of an employment contract. Your signature is a part of the acceptance process. Offer, acceptance, consideration. Bingo. One contract. Absolutely no need for an employer signature. If you /changed/ the offer the employer made, then you would need evidence of their acceptance of your counter-offer (such as a signature) but if you just signed the document they offered, you're fine. Disclaimer, my legal training is from a different jurisdiction. However this chunk of the common law is sufficiently ancient that it probsbly predates the US anyway.
  • by lar3ry (10905) on Friday March 09, 2001 @09:29AM (#373624)
    Make sure that the lawyer you talk to is well versed in IP rights in your state.

    Whether or not you signed a contract stating that your exiting IP is your property, it makes a difference whether or not your company ALSO signed the contract. Otherwise, it's just a document that states what your views were, and isn't an agreement since nobody representing your company signed it.

    I have heard of a number of horror stories about IP being "stolen" by companies (and also by less than honest workers). However, neither of these types of cases are in the majority.

    Most times, having your lawyer talk to theirs will get some agreement or settlement between the parties. It is is BOTH of your best interests. After all, a company that is seen by its employees as looking to screw its employees will eventually have zero employees working for it.

    I wish you the best of luck.
    --
  • by Thalia (42305) on Friday March 09, 2001 @12:03PM (#373625)
    IP agreements are valid in California. Please don't spout legal BS, if you don't know the law. Employment agreements that restrict your right to work somewhere else are invalid in California. (California is a "right to work" state.) But IP agreements are just fine...

    Thalia
    (Yes, IAAL)
  • So who has it, or who knows where to find one?
  • You still have the contract right??!?!?! if you do take it and run. never trust advise from the other side. Taking thier word for it is nuts, it' like saddam telling the prez that bombing is not the right thing to do. he may be right but you had better talk to some one else


    ________

  • You do not say whether you are in fact employed in the UK, and if so what sort of employment contract you have.

    If you are an employee (rather than a contractor) and you have been employed for more than 12 months, then you could consider the current position to be one of constructive dismissal, and persue an Industrial Tribunal action aganst them.

    I suspect that what you need first & foremost is a good employment lawyer, not an intellectual property lawyer. You need to determine first whether the IP contract does in fact form part of your contract of employment. Then second you need to determine whether it does in fact protect your work at home. And third, that there is not some other term of the IP contract or another section of your contract of employment which acts against the IP contract (e.g. covering noncompetitive actions on your part, &c).

    As normal, unless you want to fight, then yes, you probably are screwed.

    Meanwhile, if you do nothing else, document, document, document everything you can - including writing a narritive of the whole thing, against the possibility that they come after you assuming you do release your code.

  • Why don't you let this matter be settled in the court of public opinion? Post the text of the contract here, including the name of the company in question. I'd bet they'd fold up like a paper bag if they got slashdotted.

    This kind of crap can't stand the light of day.

    -jcr
  • Not necessarily. If he releases his code under the GPL and then his company wants to use it in their code, they can't charge for the works using his code and need to release all the source code and GPL all of it, etc. There are other open source licenses that would work better for something like what you're talking about, like the BSD license.

    Note that I'm not saying one license is absolutely better than another.

    Mr. Spey
    Cover your butt. Bernard is watching.
  • About HR: anecdotally HR apparently has shown about as much legal clue as anyone else outside of lawyers -- close to none. In fact, yesterday we had a consultant come in to discuss 401k plans (something HR has even more reason to fully understand than IP law) and we discovered that every person in the room, including me, had been mislead by at least one, and possibly more, HR people about various legal aspects of 401K plans in our lives. And there's more reason to believe that the reason was ignorance, not malice, in most cases. (Incidently, my current employer does not have an HR department, and therefore we get a lot of outside specialists instead, which has increased my knowledge of various legal aspects of my employment immensely) My point here is simply that getting a lawyer is imperative, not optional, and don't beleive anything HR says either. If they're clued, great, but don't count on it!

  • Right on. I didn't mean to imply that you should trust HR, just that they might be more clueful. I used to work at a huge industrial company as an engineer prior to my life as a lawyer, and in that instance found the HR folks to be well-versed in the law. Of course, you can't forget that they work for someone other than you.
  • Basically, if you are talking lawyers, it is time to resign. You do not trust these people. By hiring a lawyer to remind them of your agreement, you are showing them that you do not trust them. At that point, since neither side trusts the other, the best thing to do is go elsewhere.

    Being young and with a family might make that painful, but you have to face facts -- your job at this company is finished. All you're doing right now is dancing on the grave.

    My company attempted to get me to sign one of those IP agreements. There was a clause that said they owned anything "related in any way to work duties". My reply to them was that virtually anything I did with a computer could conceivably be related somehow to my work duties through enough mush-mouthed rationalizing, and I was not going to sign a contract with that clause. So I didn't. Now, if the company came back and said "You know, that program of yours that you did in your spare time on your own computer is ours," I'd politely inform them no, it's not. If they insist, well, it's time to go.

    -E

  • by Anonymous Coward
    I recently turned down a pretty decent job at a biotechnology company, who shall remain nameless because I don't owe them press one way or another, due to IP clauses in their non-disclosure and non-competition agreement. In the end, they would own anything that I was going to do on my own time if they decided that they wanted it. Additionally, I would have been strapped into this kind of agreement covering not only my own time but the stuff I was doing for a new employer for a year after I left or was fired. I decided to turn down the job because of the contract. I'll be honest and say that the cost of living in Boston didn't help, either.

    I spoke to the corportate lawyer regarding the contract and my concerns about the clauses, and he brought up a good point. It is not cheap to bring a suit to court for breach of this kind of contract. He indicated that companies are unlikely to pursue something that isn't clear cut theft of their ideas. It is also trivial to convince yourself that any company teetering on the verge of start-up oblivion will grasp at anything potentially profitable to save them from financial doom. In the end it was a no-win situation for me because of the position it could have put me in.

    Nobody will ever force you to sign one of these contracts, but I admit that I am addicted to having a roof over my head and food on the table. If one of these contracts were all that stood between me and I job that I needed to take for one reason or another, I would sign on the dotted line and bite my tounge. I suspect that many people would do the same. The only reason that these contracts are still around is because people do sign them for whatever reason. I suspect that many people don't even read them closely enough to understand what they really mean.
  • by Kurt Gray (935) on Friday March 09, 2001 @09:30AM (#373646) Homepage Journal
    As long as you can convince your employer that your projects should be released under some GPL-like licence, and you get that code uploaded somewhere into the public before you leave, then no matter where you go from there you can reuse your code.
  • First of all, in choice (a), why would you lose your vested stock options? In all the options agreements I've ever read, you will only lose them if you're terminated for cause. They can't take them from you otherwise.

    Well, actually there are quite a few companies, including Microsoft that give you options, but you can't exercise them until you've worked at a company for so much length of time (i.e., you become "fully vested.") This is perhaps the case here.

  • by TermAnnex (154514) on Friday March 09, 2001 @09:32AM (#373649)
    I'm not a lawyer, and I don't have any experience in this, so bear with me. The agreement you signed as part of your contract with company, and now they are telling you they will break that contract, so it's you who could sue them for breaking the contract. If you release your project as open source, It would be fairly easy to prove that you have not stolen code or ideas from them in any way. Also, if the contract doesn't have any ifs or buts about your home projects being your home projects, such as, if your projects are in the same area as the companies projects then the company gets your work, it's pretty clear to me that no matter what your boss says, your contract with them is valid as ever.
  • by infinite9 (319274) on Friday March 09, 2001 @09:33AM (#373651)

    I quickly became jaded working as an employee. I found that companies always viewed me as a source of income for them, nothing more. I've never worked for a company that was loyal to me. So I'm loyal to only my family and friends. That's all. I switched to contracting as a way to make more money while getting some freedom. In my opinion, stock options, while they may get someone a fair amount of money once vested, are a risky way to go, especially in today's climate. Let's think about the math. In the five years it takes you to become vested, you could be making $50-$100 an hour as a contractor. If you live well below your means, you could put away $50,000 to $100,000 a year. In a good mutual fund over the same five years, you could do very well. And, you have control. You can leave when an environment goes bad without losing your investment in the vesting period. And you can incorporate. I have a young family also (4 kids and I'm 30), and I've missed less work as a contractor than as an employee. This is because I know when the end of the contract is and I can plan for it. As an employee, I would show up to work one day to find the company closed. It's not for everyone, but it's for me.

  • In the US it probably is a Copyright issue, though it may be an employment issue as well when it coems to your agreement with them. (I hoep you kept a copy safely tucked away.)

    In in the US, take heart in that the last revision of the US copyright law (1988 I believe) actually did a great deal to strengthen authors' rights in cases such as this.

An inclined plane is a slope up. -- Willard Espy, "An Almanac of Words at Play"

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