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The Courts Government News

Company Ownership of Employee Ideas 435

Posted by michael from the 0wned dept.
Anonymous Coward writes "Alcatel USA Inc. filed a lawsuit, and won, in a bid to claim proprietary rights for a software idea of one of its former employees, Evan Brown. Evan signed a invention disclosure agreement with his former employers but what makes this case unusual is that Evan never wrote anything down with regards to his idea, meaning that Alcatel seems to be claiming rights to an idea in his head. Does this mean your thoughts may belong to your company? Maybe...." This story has been kicking around for a few days but this is the first legal analysis I've seen of it. Watch what you sign! J adds: see also recent TR story and our 1999 story.
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Company Ownership of Employee Ideas More

Company Ownership of Employee Ideas

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  • ...was that he represented himself in court. This had to be a HUGE disadvantage for himself.

    That said, I think he got screwed. Where's the EFF for this guy? Shouldn't they take up his cause?

  • Update... (Score:2, Funny)

    by D-Cypell ( 446534 )
    Evan has since decided to terminate his employment with Alcatel. But a court has ruled that his head must remain until the patent on it expires.
    • that's great...now I'm going to go to bed with this picture in my mind of a head sitting on a chair in a cubicle asking passerbys to grab some coffee for him...

      "Little help here??"

      I should sleep just fine now.

    • Re:Update... (Score:2, Funny)

      by seefried ( 211451 )
      Or should that be "sever" his employment with Alcatel. :)

      Semantix

  • Legal limits to such contracts (Score:5, Interesting)

    by Daetrin ( 576516 ) on Wednesday August 14, 2002 @08:11PM (#4073904)
    Every contract i've ever signed with a company has a clause like that. However in California there are state laws that state that regardless of any contract you sign, any ideas that you come up with in your own time (not at work and not using company resources) remain your own.

    They even seem to be legally required to state that such is the case, or at least every contract i've signed has a footnote after the clause describing the state law.

    • The company I work for has a clause like that.

      However, I am an hourly employee. They can claim what they want as far as my ideas go, but if they want to claim my work, they had better be prepared to pay overtime for a Very Large number of hours.

      I also have negotiated my way out of this clause, but still :)

      For those that are not in hourly positions, try to get permission to moonlight on something unrelated. This causes legal headaches for people wanting to claim your IP you created in your own time (who gets rights to it, anyway?)
    • It is a shame he was in tex-ass and not part of the civilized world, such as California. Now that bloodsucking corporate robber barons are claiming to own people's thoughts, it is time to re-examine the whole dubious notion of "intellectual property." Perhaps that notion belongs in the dustbin of history.
    • I have seen many that do not (have the clause). In fact, every company I've ever worked for in 15+ years in California had no such disclaimer. I also refused to sign ANY such agreement. I have worked for several companies throughout the years that had such IP agreements and I have either not signed them, or had them changed to suit me and abide by CA law. I even had a couple companies thank me for pointing out the incorrect contracts and change them appropriately company wide.

      I have no problem with allowing a comapny to own any idea I come up with on their time and/or with their equipment, but they do NOT own me on MY time and they certainly have no rights to what I do on/with MY equipment.

      I couldn't get to the article to read it (it requires cookies which I refuse to allow in most cases). I wouldn't be surprised if the person in this case failed to research the applicable laws in his state and address the contract appropriately before he signed it.

      People really need to learn to pay attention and know their rights and the law.

      PGA

  • Selling more than your soul... (Score:3, Insightful)

    by Lurgen ( 563428 ) on Wednesday August 14, 2002 @08:12PM (#4073915) Journal
    At my last three jobs, I have conveniently "forgotten" to submit a signed copy of the document that lets them own everything I create. For years now I've hated the idea that anything I do while employed (even if it's not work related) could be taken away from me.

    I write (or should say, wrote) magazine articles as a freelance writer in my spare time. Despite the fact that I always wrote these from home, the current Intelectual Property contracts in Australia would have meant that my employer owned my words - not ideal.

    Despite having failed to submit signed copies of these contracts for 3 jobs in a row (over a 4 year period, no less), I've never been hassled over it.

    I guess my point is this: don't sign it if you don't agree with it. Sure, you might not get the job, but think of the implications if your "hobby" becomes an overnight hit!

    As a side point, imagine how the guys from id would have felt if they had been forced to hand over their revolutionary 3D game engines to their employer at the time, simply because they thought of the ideas while sitting on the toilet at the office.

    • Re:Selling more than your soul... (Score:4, Insightful)

      by the eric conspiracy ( 20178 ) on Wednesday August 14, 2002 @08:18PM (#4073954)
      At my last three jobs, I have conveniently "forgotten" to submit a signed copy of the document that lets them own everything I create. For years now I've hated the idea that anything I do while employed (even if it's not work related) could be taken away from me.

      If your idea is work related, it proabably doesn't matter if you signed the contract or not. If the idea isn't work related, many states prohibit the company from claiming rights to it,

      So the effect of your not signing the contract is probably zero.

      • Blockquoth the poster:

        If your idea is work related, it proabably doesn't matter if you signed the contract or not.

        OK, so what you're saying here is: Not only does the company own the very thoughts in your head; now, you don't even have to agree to it? You can't opt out? That's not employment -- it's slavery.


        Of course "it matters" if you sign the contract. Otherwise why they insist that you do? The contract is certainly not optional from the point of view of the legal department.

        • so what you're saying here is: Not only does the company own the very thoughts in your head; now, you don't even have to agree to it?

          No, it implies that, should your idea relate directly to the company's work, it is probably heavily influenced by what you were paid for and could be viewed as a minor extension of it.

          Of course "it matters" if you sign the contract. Otherwise why they insist that you do?

          Can't hurt, and it's something to hold over your head.

          • Blockquoth the poster:

            No, it implies that, should your idea relate directly to the company's work, it is probably heavily influenced by what you were paid for and could be viewed as a minor extension of it.

            Well, unless they've secured my signature agreeing to their terms, it sucks to be them but they're not entitled to any part of it. That's what contracts are forBec, and I am only bound by the ones I sign. Not the ones the company thinks I should follow...


            Or can I say, "I think the company should provide me with 100% medical" and then expect it? Or is it only a company that can unilaterally impose its terms and expect a court to back them up?


            The issue here is that you claim I don't have to sign a contract. How far does that extend? Logically, couldn't GeneriCorp say, "Well, we secretly hired him -- without even his knowing it -- and a condition of employment is this Disclosure Agreement. So obviously he's bound to it. Where's the signed contract stating that? Well, under the new precedent, we don't need one"


            Because, after all, you argue "it proabably doesn't matter if you signed the contract or not."

    • id was forced to hand over the code [slashdot.org] to their 3D engine. Even so, Softdisk never did anything with the code. I got the T-Shirt. I won't sign anything that claims ownership of off-work non-company-related projects. I've been "asked" to before, but didn't and didn't encounter a fuss.

      I just won't allow companies to suck the life out of me. I give them 1/3 (too frequently 1/2) of my professional time. I'll be damned if they take my personal projects and make me foot the bill.

  • Fool (Score:3, Insightful)

    by smack.addict ( 116174 ) on Wednesday August 14, 2002 @08:16PM (#4073938)
    As they say, the man who represents himself has a fool for a client.

  • Guard yourself, but don't quit tinkering! (Score:5, Insightful)

    by cybermace5 ( 446439 ) <g.ryan@macetech.com> on Wednesday August 14, 2002 @08:18PM (#4073946) Homepage Journal
    First of all, if you signed that agreement, everything you do at work is theirs.

    If you want to do something on your own time, you have to take precautions. It might not be convenient, but you'll thank yourself when your old company can't come after the business you just started.

    1) Keep a detailed journal. In fact, keep two journals, one for the things you do at work and another for the things you do at home. There shouldn't be much common between them.

    2) Buy your own equipment and development tools. You can't use their computer, their copy of Visual Studio, their ciruit fab machine, whatever. Anything you make, that you want to be totally yours, must be done on your own dollar. Don't even use their workspace, or their email system, or their internet pipe.

    3) Make sure you fully understand the intellectual property agreements, and have a copy of the one you signed. If you break any part of the contract, you don't have a leg to stand on.

    I know everyone wants to be friends with their old company, happy memories etc., but this is business. If they think you are taking a chunk out of their dollar, they will come after you. Play it safe, or be sorry.
    • All absolutely correct.

      Lets face it, for SURE he developed this while he was working as an employee under a crytal clear agreement, so all his bases are belong to them. He was dead in the wrong, whether the idea was in his head, on paper or on a CD.

      He could still have got away with it though - he should have quit his job, sat in the mountains for 3 weeks or so, pretending to dream the whole thing up, and then gone back and tried to sell it to his old company. Where he went wrong was being too chicken and trying to keep his safe day job while at the same time trying to sell this to his bosses. Trying to have it both ways and finishing up losing his house as a result.

      Its a lesson for anyone out there who's got a great idea. With great rewards come great risks - if you've got a $10M idea, at least have the balls to take a few weeks out, change to another day job, then declare it in your "prior inventions" at the new place, leaving your free to sell it around.

    • I am 100 percent in agreement with the above points. Let me also add that these are guidelines that everyone who is involved in open source should observe religiously.

      You can endanger an entire open-source project if you don't enforce an absolutely rigid separation between the open-source work and your real work. If you are subject to an idiot contract like what frequently obtains in the US, please, don't work on open source at all, not even at home - you're dangerous.

      Don't work on your open source stuff on your work machine, even if it's on your own time and even if what your employer does is not even remotely related. Don't even engage in email discussions about it, not using a work account and/or from a company computer. This is point 2 above.

      This sounds nuts but the post above is bang on the money. Many companies really do think they own you lock, stock and barrel, 24/7.

  • Typical, but not right (Score:3, Insightful)

    by Junks Jerzey ( 54586 ) on Wednesday August 14, 2002 @08:18PM (#4073948)
    I strongly disagree with this sort "we own your mind" nonsense, but it is common. Every company I've worked for, in several fields, has made me sign the same kind of document.

  • This is a good ruling (Score:4, Insightful)

    by HEbGb ( 6544 ) on Wednesday August 14, 2002 @08:18PM (#4073951)
    The courts rightly recognized that employees should not be able to withhold potentially valuable ideas from their employer, specifically against their employee agreement. Whether the ideas are committed to practice, or written on paper, is irrelevant. He had an idea valuable to his employer, tried to get extra money from it, and when he didn't get an offer good enough, he refused to disclose the idea. What a horrible precedent it would set if Brown had won.

    Pinker was absolutely right when he said:

    Technology companies are in the business of inventing, and if people are doing it on their own behalf and take it for themselves from the company, the company is not going to stay in business long.

    Also vital is this passage:

    Lewis believes Brown could have helped his case had he kept an idea log, as inventors do in the patent arena. Establishing that Brown had the idea years before coming to DSC would have contradicted the signed agreement and gone a long way toward establishing Brown's credibility.

    Heed his warning. Brown has a tough case to fight, but kudos to him for 'sticking to his guns'. I predict, however, he will lose.
    • You neglect the fact that the idea was developed on his own time. My company does /not/ own any part of me while I'm not on their time. Period.

    • Bull. (Score:3, Insightful)

      by achurch ( 201270 )

      The courts rightly recognized that employees should not be able to withhold potentially valuable ideas from their employer, specifically against their employee agreement.

      Against the agreement, yes. But no employer should be able to require that employees do anything when they are not on company time. Otherwise how is the relationship any different from "master and slave"? Slavery was (at least in the U.S.) outlawed a long time ago . . .

      He had an idea valuable to his employer, tried to get extra money from it, and when he didn't get an offer good enough, he refused to disclose the idea.

      And just where is the problem in this? Assuming, of course, that Brown really did invent it on his own time, he should have every right to sell it to the highest bidder, or not sell it at all if he wants. The company certainly shouldn't have the right to take something from him that they never paid him to create in the first place.

    • Re:This is a good ruling (Score:5, Insightful)

      by Salamander ( 33735 ) <`jeff' `at' `pl.atyp.us'> on Wednesday August 14, 2002 @08:47PM (#4074075) Homepage Journal

      Not only was the idea developed on his own time, it was developed before his employment there began. That's the part that's so noxious about this. Basically they're claiming rights to an idea that had nothing to do with them or their business, just because someone happened to work for them somewhere along the way, and that's nothing but the rawest kind of opportunism. How, one must ask, does that fit into the supposed theory behind intellectual-property law, which is to foster innovation and creativity for the public good?

      • Basically they're claiming rights to an idea that had nothing to do with them or their business, just because someone happened to work for them somewhere along the way, and that's nothing but the rawest kind of opportunism.

        From the article:

        "In April 1996, Brown sought a release from DSC to pursue his idea. Brown alleges that he asked several managers at DSC whether the company would be interested in helping him develop the idea. According to Brown, DSC and Brown began negotiating an agreement whereby DSC would pay Brown a percentage of savings realized by the company if the idea was successful and a percentage of income from third-party sales, but the company later halted negotiations. Brown says when he refused to reveal his idea, DSC fired him and sued him."

        Apparently Brown & his managers felt that the company could develop a commercial application. Any idea that is applicable to the employer's business(s) is fair game.

      • Blockquoth the poster:

        How, one must ask, does that fit into the supposed theory behind intellectual-property law, which is to foster innovation and creativity for the public good?

        My goodness, is there anyone out there who still believe in that old saw? Don't you know that the purpose of intellectual property law is to ensure that the most obscene amount of profit is wrung from the public domain by whoever got there first (or, more commonly, with the most lawyers)?


        "Public good"? How quaint.

      • I'm not sure how this is really relevant though. The courts had to decide who owned the idea. IANAL, but it seems to me that his only basis for ownership of the idea was that he started this idea years before he was hired.

        There are really 3 issues that I see.

        1. Evan Brown defended himself. This was probably for financial reasons. Still, if you go to his personal page, it seems like he was quite overwhelmed by the legal system (Thats probably another discussion right there)
        2. He tried to turn his idea into financial gain inside the company. One interpretation of this is "Give me money and royalties or I take my idea and start my own company". This may not have been his intention, but I suspect that Alcatel interpreted the situation as this.
        3. He didn't document his idea.
          To quote from the site:
          "Brown asserts that he began developing the idea in 1975, well before his employment with DSC began in 1987, and had achieved about 80 percent of the solution. In March 1996, Brown claims, he mentally solved the remaining 20 percent while vacationing."
          Personally, I would doubt that someone could develop an idea for 21 years and not have any documentation to prove it. I will not say that its impossible, but I think it would be highly improbable.
        All this said, I am curious what would have been the ruling (or are there any) if he had a partner in his idea? What if this partner worked for another large intrested company? Who would have had ownership?
    • Here's the question: Was he paid, or did he use company resources (i.e. materials) to develop this idea.

      if not

      The idea belongs to him.
    • The biggest problem is that Brown should probably not be representing himself. While he is certainly entitled to do so, in a case like this I would recommend finding the world most slippery, weaselly, down-and-dirty-junkyard-dog-fighting lawyer to help with the defense.

  • Reverse-engineering techniques? (Score:5, Interesting)

    by Cutriss ( 262920 ) on Wednesday August 14, 2002 @08:18PM (#4073953) Homepage
    The court also held that, pursuant to the contract, the company owned full legal right, title and interest to what Henderson called Brown's "solution," which he defined as the process and method developed by Brown for converting machine-executable binary code into high-level source code; reverse-engineering the intelligence from existing programs and recoding it into high-level language; and converting certain machine code into C language source.

    Excellent! Alcatel won the right to violate the DMCA!
  • According to the article, Brown was fired when the product was still an idea. Since then, he's done development without any support from Alcatel, not on their time, etc. How can they presume that they should own his work? Is all the work I do from now on the property of my former employers?
    • According to the article, Brown was fired when the product was still an idea. Since then, he's done development without any support from Alcatel, not on their time, etc. How can they presume that they should own his work? Is all the work I do from now on the property of my former employers?

      Good question. Even if Alcatel does own the rights to the idea, shouldn't their ownership be limited to the basic idea only and shouldn't Brown own everything he did after leaving the company? If his work is considered derivative to his Alcatel owned idea he might have to pay for the use of the core idea, but he should be able to hold copyrights and patents on his actual implementation. Since you aren't *supposed* to be able to patent an idea but only an embodiment, this could limit Alcatel's ability to practically exploit the concept without his permission.

      Now they might insist that he was using their confidential information (his idea) to develop his technology. However, they still shouldn't be able to claim all of his work. The laws and contracts relating to non-disclosure and competitive practices usually allow one to at least make use of skills and expertise in a given field, including when that knowledge is gained as a result of employment.

      And even if the contract and the governing law was such that they could claim most of the directly derivative work, presumably much of the IP he developed by actually building and testing wouldn't have even been truly derivative. Usually a final product bears little resemblance to an original idea, and some of the most important features may have little to do with the core concept. So in any case, even if they can stop him from pursuing his idea, they shouldn't get automatic rights to his all of his subsequent IP.

  • Welcome to the new feudalism. (Score:5, Insightful)

    by g4dget ( 579145 ) on Wednesday August 14, 2002 @08:19PM (#4073958)
    If you work for a company, the company basically owns everything you invent. If you work for a university, the university claims ownership of your ideas. You might be able to work for yourself, independently, but that's getting harder and harder, too. Software companies are putting out a minefield of patents, getting your own patents is enormously expensive (basically, it's affordable only if you become your own patent attorney), commercial software and services you use may come with requirements to transfer intellectual property, etc.

    One lesson from this is: if you do something "on your own time", don't talk about it to your company; you can always publish it after quitting and nobody can prove anything. Furthermore, in certain special circumstances, if you do need an exception from a company's IP policy, get it in writing before you sign the employment contract.

    Why companies get away with forcing these contracts on workers is hard to understand. They hire consultants that do not fall under such restrictions and pay them more to boot. Furthermore, in many states and countries, there are limitations on such claims by employers, but this is in Texas.

    • And if you work for NASA... they will help you file a patent under your own name. Even if it was something you developed as part of your job. Of course, NASA gets a royalty-free licence to use the patented technology. But the inventor gets to exploit the patent if it has commercial application.

      One nice little perk to being a NASA engineer (assuming you're not a contractor hired by Boing, Lockheed/Martin, Northrup/Grumman, etc).
    • If you work for a university, the university claims ownership of your ideas.

      I've also heard that if you're a student at many universities, the university claims ownership of your ideas. I've never seen a university try to enforce this, however.
      • Blockquoth the poster:


        If you work for a university, the university claims ownership of your ideas.

        I've also heard that if you're a student at many universities, the university claims ownership of your ideas. I've never seen a university try to enforce this, however.

        Even better: During the time I was at Stanford as an astrophysics graduate student, I had to sign a form that could reasonably be interpreted to say: "If you write a best-selling novel, but you do it using your student account and our terminals, then we own all rights to it and you have none."


        Which was a good reason for getting one's own computer. Then they tried the interpretation that, "If you write a best-selling novel, and you do it on a computer (even your own) on the Stanford network, then...."

  • There is a good reason (Score:5, Interesting)

    by www.sorehands.com ( 142825 ) on Wednesday August 14, 2002 @08:27PM (#4073992) Homepage
    You come up with an idea, but only work on it in your head. And it is related to your employment, who should own it?


    Now it could also hurt the company too. The when I became afflicted with tendinitis, the WC insurance company tried to avoid responsiblity by claiming it is from my computing at home. Since the company had the same type of inventions agreement, I argued that since they owned all I worked on, then they had liability for all injuries from what I worked on. MSI took possesion of what I worked on at home, then claimed, in the WC hearing, claimed that program they took was not related to my employment which means they took my work by fraud.


    The knife cuts both ways.

    • An interesting extension. Therefore, if you have an IP clause, you should not purchase medical insurance, because the company is responsible for your health 24/7?
    • You come up with an idea, but only work on it in your head. And it is related to your employment, who should own it?

      You should own it.

      Of course, if it is directly related to the project you're currently working on, then you'd better make use of your idea by implementing it for your current employer. But that's not because the idea is owned by the employer -- it's because if you don't make use of your idea, you won't be able to complete your project. And completing the project is your job.

      If the company owns all ideas that you have while working for them, you can never safely start an independent business. People don't sit in their office and then, one day, decide that they have no ideas whatsoever but should quit their job, go home and try getting ideas. How it actually works is that while you're at work, you have an idea that is not directly related to your current task, or you're not satisfied with your payment or your company's management or something like that. And then you decide "I can do better than this," and start your own business.

      It even used to be the case that you could not just start a new business with something related to your previous job. You could even do almost exactly the same thing. Think about people who invented a groupware solution [lotus.com], then decided that they could do better, and invented another groupware solution [groove.net].

      What if, while working for your company, you have a great idea, tell your employer about it and they believe the idea won't work? Don't tell me this doesn't happen, it happens all the time. So you decide to quit and start your own business. One or two years later, your business is a big success. Should it be possible for your previous employer to claim ownership over your business because you developed the idea for them?

      I hope not. It would mean you take the risk, they take the profit -- without any investments. Capitalism, huh?

  • Solution: Move to California (Score:4, Informative)

    by adam_megacz ( 155700 ) <adamNO@SPAMmegacz.com> on Wednesday August 14, 2002 @08:31PM (#4074010)

    California Labor Code, section 2870 [ca.gov] states that no matter what you signed, your employer cannot claim ownership of intellectual property which:
    • you created entirely on your own time
    • you created entirely with your own equiptment
    • is not directly related to your employer's business, or demonstrable future business plans (ie ideas currently in development).
    • Just make sure that if you do move to California, don't file for divorce there. The judge will probably find that your wife owns half your idea.

      Personally i'd choose employer over wife.
    • That provision is famous in Silicon Valley. It's considered partly responsible for much of the growth of the semiconductor industry. If you have a new idea, and your employer doesn't like it, then it must not be "related to your employer's business" and you can take it elsewhere.

      As for the decompilation problem this guy spent 25 years thinking about, there's a open source C decompiler [uq.edu.au], although it's rather dated. Commercial decompilers go back a long way; the first one translated IBM 1401 assembler programs into COBOL. The COBOL orientation continues; see Source Recovery [sourcerecovery.com]. Recovering long-lost business applications seems to be the big market for these things. Decompilation is tough, and the output code is usually ugly (because decompilers tend to lose idioms), but it's certainly been done.

      It's a neat problem, and somewhat under-studied. Of course, today a good decompiler would probably be considered a DMCA violation.

  • Not IP. Contractual Obligations. (Score:3, Insightful)

    by Chris Canfield ( 548473 ) <slashdot@@@chriscanfield...net> on Wednesday August 14, 2002 @08:32PM (#4074014) Homepage
    The article seems to brush across a major point of this dispute. Previously, if you had written down an idea on a napkin, flushed it out on toilet paper, or jotted notes in a notebook, the company had the copyright on, and trade secret protection for, the notebook.

    The error of the court, and IANAL, is that there is no law defining ownership of ideas, only protection of expressions from copying and the protection of potentially useful or damaging secrets. In defiance of 200 years of patent law, the court claimed the ideas were property of Alcatel, and QED must be turned over.

    We have the RIAA to thank for that incorrect interpretation of the wording of the contract. Now he is stealing the company's "Intellectual Property," as if he walked out of his office with a stapler, rather than the arguably correct interpretation.

    What he did do, and the option which the courts have overlooked, is violate his contract. If he wrote down his idea, the company would have the copyright on the paper and, quite correctly, the court would award ownership of the medium to the company. But he didn't. He's required by the terms of his contract to disclose something to the company, and he hasn't. He is in breach of contract, not breach of property law.

    Maybe it is just the Law.com article which is misframing the judgement as a property issue in order to goad slashdot. We would need to see the judgement directly to know whether the judges decided he should hand over the information in order to fulfill his contractual obligations, or because the ideas in his head weren't his property. Is any lawyer (or law student) present that knows what the difference in punishments would be if this were a property issue as opposed to fulfilling contractual obligations?

    -Chris

  • Will (Score:4, Funny)

    by EvanED ( 569694 ) <evaned@noSpam.gmail.com> on Wednesday August 14, 2002 @08:34PM (#4074019)
    He should stipulate in his will that when he dies, the part of his brain that contains the idea be cut out and sent to that company with a letter stating "pursuant to court ruling blah blah blah, here is the idea I thought of."

  • From my reading of it, it seems it was his fault. (Score:5, Insightful)

    by Xoron ( 126877 ) on Wednesday August 14, 2002 @08:35PM (#4074030)
    Read this paragraph again:

    "In April 1996, Brown sought a release from DSC to pursue his idea. Brown alleges that he asked several managers at DSC whether the company would be interested in helping him develop the idea. According to Brown, DSC and Brown began negotiating an agreement whereby DSC would pay Brown a percentage of savings realized by the company if the idea was successful and a percentage of income from third-party sales, but the company later halted negotiations. Brown says when he refused to reveal his idea, DSC fired him and sued him."

    It seems to me, that while still employed he tried to negotiate an agreement with them, for them to pay him for this idea he had (Which he had not stated in his inventions). They started negotiating, and then a lawyer of theirs realized that "Wait, we own this, don't we?" So they asked him to turn it over. I'd say if he was negotiating to sell it, it was damn well concieved already. Only when he then refused to disclose, they fired him (under breach of contract) and sued his sorry butt.

    This is not a precedent to them owning ideas in your head. It's a precedent saying, don't try to sell inventions to your employer, who was employing you when you came up with it. (Which really is rather fair).
    • I would like to thank you for pointing this out. Like everybody else on here I was getting ready to make a mess in my pants - but after reading your statement it suddenly dawned on me:

      If this idea really had nothing to do with the company's business and couldn't be applied to anything they were doing - why in the heck did this guy try to sell his idea back to them?

      I've had discussions along these lines before - but I have to admit my sympathy for the guy disappeared when I realized that he was trying to sell an idea back to a company that he admittedly finalized while working for them. While he may be innocent of any intentional "wrongdoing" he's still guilty of being an idiot.

      Personally I still think this story is interesting based on the fact that the court ordered him to pay the companies legal fees. I believe this is practiced in Europe (at least as far as civil court is concerned) and I've long supported its use here. This says to me the court/judge seemed to feel that went beyond a mere misunderstanding into the "gross negligence" category of dispute.

      And considering the circumstances in a fair and rational manner - I would have to say I agree with them.

      J
  • (And, let's stop calling it an idea. Presumably the invention disclosure agreement is designed to hang onto the ownership of patentable inventions, and by now everyone at Slashdot knows that expressions are patentable, not ideas.) At law, a verbal contract is just as binding as a written contract. It's just a lot harder to prove, as you end up dealing with "he said, she said" issues, credibility of witnesses, etc.. A well laid-out written agreement gets the court past the more basic evidentiary hurdles, and the actual application of the law itself. The invention disclosure agreement was likely designed to protect the company's ownership of expressions, period. So whether you write it down, build it, code it, or (in this case) fully develop it in your mind, it all amounts to the same thing: it's still an invention. Now, on the more interesting issue of whether an invention developed on an employee's personal time can still be covered by this agreement, I guess you'd want to look at the contract itself. If it's a high level employee getting tons of consideration - hopefully hard currency and not stock options! :) - for his work, more likely the court will assume he knew what he was signing, and enforce the agreement. But if it's just a boilerplate agreement signed by a tech monkey working in a cubicle for the same wage as other employees who _don't_ have to sign such agreements, hopefully the court will take a more equitable perspective and strike the agreement out.

  • Am I the only one? (Score:2, Insightful)

    by supabeast! ( 84658 )
    This is totally serious; am I the only person who asks about things like patent/IP/noncompete agreements before taking a job and refuses to sign them?
  • Disclaimer: I don't agree with this practice, but I understand why it is done.

    When you work as a programmer or engineer or the like, you are not an hourly employee. If there's crunch time, you'll be in late. Or you can come in evenings and surf the web from work, use the company pool table, or use the corporate network for multiplayer games. The bottom line here, is that it isn't clear where your job starts and stops. If your job involves being creative, such as writing code, doing computer art, and so on, then if you go home and write code in the evenings, the company could argue a couple of things:

    You are holding back some of your creative energy during the day in order to work on your own projects in the same field.

    What you do during the day could very well be influencing what you do at home. For example, what if one of the id programmers worked on a 3D engine at home? During the day he's exposed to a proprietary, top of the line 3D engine, so it will undoubtedly influence his thinking outside of work.

    Again, I still don't agree with this practice, but I can understand it.

  • I had been working for a company lately which was developing application for BCE Emergis.
    One day, couple of months after I began there, the boss came to us and asked that we sign an NDA.
    Was asked by BCE they said. And if we would not sign it, they would loose the contract.
    So we read it, and it was pretty anoying, because it had been writen for BCE's employee, not their contracters.
    So we would had clause stating that during the time of our employement, and 6 month after, we could not use the knowledge acquired during the time of the employement and that any developed application was belong to them.
    But because we were not BCE's employee but the firm employee, it meant that we could not use this knowledge at all for the time I was there, even if the contract with BCE ended. Real bad for the firm also...
    Well, we asked that the company call a lawyer for us with whom we discused and made some change to the NDA.
    Nothing bad happened, and the lawyer almost laugh at us for being so "paranoid", but reading stories like this one, I think that it was not paranoia that much after all...

  • What would happen if it turned out that he'd actually stolen the idea from someone else? Think for a moment about what that does to Alcatel's claim.

  • While it's true most companies try to get you to sign away everything in contracts, there is hope. First, as some people are suggesting, you can try to not sign such contracts or offer your own language. Second, in many states you have certain inalienable rights -- meaning you can't sign them away regardless what your employer tries to tell you.

    If you live in a state that does not recognize your rights, you're left with what's in the contract. Of course, many people aren't confident enough to individually bargain such details of their contract, and many companies have a strict policy of one policy for all employees. What to do in that case? Well, your options are to find another employer or to collectively bargain a contract, or to collectively try to get a law passed to recognize your rights.

    How does one collectively bargain a contract or collectively work to get a law passed? Well, you get together with coworkers and other in the same industry and either pressure employers to get them to the bargaining table or you lobby politicians to get a bill. Call me a cynic, but given that your employer and top management has more money than all the employees put together, I wouldn't count on getting a law passed by traditional $lobbying$. Either way, though, what we're talking about is a union. I'd recommend checking out WashTech [washtech.org] or the IWW [iww.org].

  • I contract for a defense branch. My employer is pretty wormy though. They tried to get me to sign a non disclosure/non compete agreement that was quite draconian. Running it by 4 attorneys they all told me that I would have a bright future as a stock clerk if I signed it. So I didn't. The agreements would have given them rights to practically everything in my head.

    I then proceeded to create an application that the defense folks wanted.

    So I copyrighted in my name. I give it to the military, my employer gets zip.

  • HOW THE HELL (Score:2, Insightful)

    by madman2002 ( 468554 )
    are they going to get the idea now that they've won it? Pry it out of his head with a crowbar? The article says the idea is only in his head, does the court expect him to spend his time finishing developing it? If I was him I'd appeal and if I lost again, I'd delete any portion of the code (or at least encrypt it and say I deleted it) and refuse to write the code. Basically say "Well, if it's YOUR idea then YOU code it", then I'd probably move because you can be damned sure I wouldn't be paying those legal fees.

    If a company owns the ideas in our head, shouldn't they own the bad ones too? What about postal workers who had the idea to kill their co-workers? Is this idea property of the USPS?
  • Alcatel management are perpetrating thought crimes against their employees. Their actions demonstrate the undeniable fact that they are evil, no better than the Church when it burned people at the stake 500 years ago in the process of executing other thought crimes. I urge in the strongest fashion that anyone reading this who works at Alcatel immediately quit, or you will burn slowly, like Evan, at the hands of an inquisition no less terrifying than that of history.

  • If I was an Alcatel employee about to leave... (Score:5, Funny)

    by xelph ( 542741 ) on Wednesday August 14, 2002 @09:18PM (#4074212)
    ... I would claim that I just had some idea about a new kind of porn site, then I would contact the media to let them know that Alcatel was considering entering the porn business any day...

  • 10 year old rumor (Score:2, Interesting)

    by jbolden ( 176878 )

    First off I've never worked for IBM but at the time this discussion was going on I lived in Poughkeepsie and knew a lot of IBMers, so YMMV.

    In any case around the time OS/2 was coming out a lot of the guys started writing OS/2 software in their free time who worked in other divisions of the company. They wanted to release it as freeware (for example a powerful text editor with REXX built in scripting sort of like an IBMified EMACS for OS/2, or a toolkit for designing the 3D icons that OS/2 supported). IBM employees were of the opinion that they were under a "we own you brain" contract so any software they wrote, even on their own time, even unrelated to their job was the property of IBM and thus it had to be distributed as freeware only after IBM had approved its distribution as freeware. As a result there was an internal and an external BBS for these freeware OS/2 applications.

    IBM never went to court with any of these guys, they were all of the "a deals a deal" opinion, and that the contract did mean that IBM owned any creative work of their's. But there was discussion the OS/2 community when some of these programs leaked as to whether this was piracy or not. These programs had never been copyrighted, their authors had intended to release them as freeware, the copyright holder had not asserted rights among the general community (the employees were waiting for a "go ahead" from IBM, IBM hadn't given a go or a stop signal)....

  • Don't get your shorts in a knot. (Score:2, Interesting)

    by Anonymous Coward
    IAAL.The following is a typical (Non-California) inventions agreement clause:

    Assignment of Inventions and Original Works.

    (a) Inventions and Original Works Retained by Me. I have attached hereto as Exhibit A a complete list of all inventions, original works of authorship, developments, improvements, and trade secrets that I have, alone or jointly with others, conceived, developed or reduced to practice before the commencement of my employment with the Company, that I consider to be my property or the property of third parties and that I wish to have excluded from the scope of this Agreement. If disclosure of an item on Exhibit A would cause me to violate any prior confidentiality agreement, I understand that I am not to list such in Exhibit A but am to inform the Company that all items have not been listed for that reason. A space is provided on Exhibit A for such purpose. If no list is attached, I represent that there are no such items.

    (b) Inventions and Original Works Assigned to the Company. I agree that I will make prompt written disclosure to the Company of and will assign to the Company without further payment or consideration all my right, title and interest in and to any ideas, inventions, original works of authorship, developments, improvements or trade secrets which I may solely or jointly conceive or reduce to practice, or cause to be conceived or reduced to practice during the period of my employment with the Company. I understand that only ideas, inventions, original works of authorship, developments, improvements and trade secrets which

    (i) were not developed or produced using equipment, supplies, facilities or trade secrets that belong to the Company, and

    (ii) do not relate to (A) the business of the Company as it is currently conducted or contemplated to be conducted or as it may be conducted during the term of my employment by the Company or (B) actual or contemplated research or development conducted by the Company, and

    (iii) were not developed or produced during ordinary business hours


    are not covered by my obligations to report and assign under the first sentence of this paragraph (b).

    Some observations:

    1. If he had the idea before he was hired, he should have listed it. If he did not list it then, he cannot credibly assert that he had it then. "If no list is attached, I represent that there are no such items."

    2. The fact that he did not write down the idea, does not work in his favor. The agreement obligates him to disclose ideas in writing to the Company during his employment. ". . . I will make prompt written disclosure to the Company of . . . any ideas. . . which I may . . . conceive . . . during the period of my employment with the Company." This is what he was hired to do.

    3. If you want to make sure that it is yours cybermace5 had it right [slashdot.org] your own time, your own stuff and journals, journals, journals.

    4. RTFC. If you do not understand it find someone to explain it to you. If the Company is hiring you for a technical position it is because they want your thoughts and are willing to pay for them. They are entitled to what you do on their time or with their stuff. If that makes you unhappy, you need to find a different way to make a living. Can you say consultant?

  • It's a helpful thing to remember when the company pays for lots of additional days off, doesn't question sick days, and give you equipment to take home to work.

    I routinely develop ideas (training materials for example) at home, in my spare time.

    Does my company have a right to them? Hell yes, they pay me to perform my job, not on an hourly rate, but on a yearly salary.

    Do I like it? Hell No, but I like the pay, so I find it an even trade. Now, material not job specific, that's outta bounds...

    Yo Grark

    The Sum of all idiots is one genius shy.

  • Speak your mind about IP agreements (Score:3, Informative)

    by signe ( 64498 ) on Wednesday August 14, 2002 @09:43PM (#4074319) Homepage
    IEEE has an Intellectual Property Committee that researches and investigates IP laws and agreements and such. They often propose policy to the government (US, specifically).

    One of the things they're working on right now is collecting information and opinions on pre-assignment agreements (these are the agreements that you're asked to sign at the start of employment, or a contract, which assign all rights to the company you're working for. I highly suggest that everyone who has a strong view go to http://ieeeusa.org/committees/IPC/ [ieeeusa.org] and read the information they have and make comments using the form on that page.

    -Todd
  • At first I thought this was a case of Brown mentioning an idea and the company taking the idea and running with it. I seriously don't have too big a problem with that. Everybody has idle musings and ideas, but it's the people who act on them who are rewarded.

    But this? It's reminicent of the Borg, pardon the Trek reference all your base truely are belong to us... The fact that this project predates his employment should render such a lawsuit and intellectual claims null and void. Somebody in the courthouse has obviously fallen asleep at the wheel... But it just goes to show you... THE JOB IS NOT YOUR FRIEND. Depsite popular belief, they are not there for your benefit, no matter how much like it. in otherwords, what you do outside of work is your business, not theirs because they really don't want you to succeed past the point where you are no longer dependant on them.
  • "When Brown mentioned the idea to his employers while he worked for DSC Communications of Plano, Texas (subsequently bought by Alcatel) DSC decided it owned the rights to Brown's insight and demanded that he revealed his idea. Brown refused and he was fired. DSC then launched legal action against him to gain possession of his thoughts. "

    He told them, on work time, at work. I always figured that if I said something at work "hey what if we put this gizmo with that whatsit" then they would own it. But if I thought of putting the gizmo with the whatsit on my own time, and then sold it on my own, either to somebody else, or actually brought a patented product into work to sell them (and I still think even that would be iffy) that would be different. Hell, if it's just his thoughts, how can he prove that he didn't just think it up at work? He should have kept his mouth shut.

  • . . . would there have been the tech explosion in Silicon Valley?

    After all, think of the number of startups that formed when someone had a cool idea, left their employer, and started out on their own . . . Companies like Intel, for example.

    Personally, I find this kind of thing utterly insane, and really quite disgusting - my thoughts are /mine/, not my employer's. It's up to me to decide whether I want to sell them (which is what I'm doing when I accept a salary for working on ideas); anything else amounts to indentured servitude.

    himi
  • This sets a nice stage to provide a court test on the patentability of software at an appellate court level. If software is not patentable, then the agreement is not applicable to software.

    He deserved to lose because he asked permission the way he did, and because he dissolved the relationship with his lawyer.

    But that leaves several avenues for appeal, and one of them is to question the patentability of software in the first place.

    -- Terry
  • .....that makes security products?
  • See: Who owns what's in your head? [amazon.com] for a thorough overview of the topic. The short answer is that, yes, what Alcatel is claiming is really not that far out. The precedent has been established years ago.
  • A few years ago, the dot-com I was working for sold its B2C component to another dot-com. Both of them were involved in selling insurance online. The first has transformed itself into an ASP, the second is gone -- it literally no longer exists.

    In the first few days after the transfer, we were presented with a contract to sign that would assign all rights to anything we created to our employer. My boss mentioned that they'd want to talk to me about my font site, and I f--king lost it. (He was a cool guy and could deal with me venting.) Given that many of us on the web dev team were pursuing our own things on the side, I decided to put a stick in the hornets' nest and stir.

    A good number of us, when informed that they were serious about their "ownership" of our ideas/creations, decided to present a united front and get them to change the wording so that it clearly specified that they could only claim ownership on ideas as the pertain to the business of selling health insurance online.

    Surprisingly enough, they did it with no complaint. What I've discovered since then is that companies are willing to flex on this. Really...what is an insurance dot-com going to do with my fonts? Or with the novel I just wrote? They don't...the blanket statement is just there so that they can capitalize on people stupid enough to sign away their rights...they'll adapt it so that it merely protects their business.
  • I work at Alcatel in Plano, and most people here agree that while Evan [unixguru.com] is a nice guy, he pretty much slit his own throat from day one.

    This is really not as simple as "Alcatel (DSC, really) owning soandso's idea", although it makes great headlines.

    What happened was:
    1. He signed an agreement (which most of us do not have to, BTW) giving DSC rights to anything he invented - gee whiz, Cisco, Sun, Nortel, Oracle - pretty much eveyone does this with the few choosen employees who get to sit around and dream up these things.
    2. He made the big mistake of telling his supervisors about this great idea of his when there was no written documentation (duh.)
    3. DSC offered to give him a big $$$ check for his idea, but, he decided to "fight the man" (read: gamble) for his idea and he lost.
    4. Even Evan himself admits that he could have excluded this idea (that he has always said he starting working on in 1975) from the legal agreement (doh!). Maybe he would have stood a better chance in court if he had some prior documentation or at least a mention of it.

    Whats the real lesson here? Common sense always applies. If you've got a million dollar idea - dont sign an intellectual prop agreement! Or how about, Dont listen to lawyers who want you to go to court so they can get rich from you (my personal favorite).

    I truly like Evan Brown, and i hate to see him get slammed by our legal guys (i've watched this case since 1999), but for the most part we all believe he just made bad decisions as opposed to being victimized.

    BTW, we have running joke at Alcatel that our legal department is a profit center - we've sued many more people and corps... :-)

  • I was asked to sign one of these at an interview (Score:5, Interesting)

    by Skapare ( 16644 ) on Wednesday August 14, 2002 @11:50PM (#4074760) Homepage

    I interviewed with a technology development company and was asked to sign one of these forms right there at the interview. It was made clear to me that if I didn't sign it right then and there, the interview could not continue. Most of it involved non-disclosure. But some of it did sign over all my invention rights to them.

    There was one clause that specified that if I was not hired, then the contract only applied to information made available to me during the interview. It was not entirely clear how well that applied to the parts about me handing over all my rights to my own intellectual property.

    The really stupid part of this wasn't that they wanted me to sign such a contract, but that they barely gave me enough time to read the whole thing (I actually did). Due to it being in the circumstance of an interview, it wasn't possible to go consult an attorney, much less find one that practiced in both employment law and intellectual property law (we're probably talking a week or two at least). When I asked the HR guy about it, he indicated they had interviewed 3 other candidates for the position and were looking to make the hiring decision within the week, and that such a delay would probably mean the position would no longer be open.

    What made me decide to walk out wasn't so much the fact that the situation existed (though I might well have because of it), but rather, the fact that the HR guy was so perfectly prepared in his answer to me. Whether he was telling me the truth or not wasn't even relevant. Later, I found the same job was posted again. Who knows how many walkouts they had.

    Later, a recruiter was trying to get me in to interview for a position at an entirely different company. On Monday he was saying they had people from their New York headquarters in for the week to do the interviewing and they were booked up very tight. By Wednesday, he had an appointment for me for a Friday interview. Then the surprise. He wanted to send me the non-disclosure and non-compete contract. His explanation was because the schedule was so tight, they wanted people to be coming in with the contract already signed. At first we had an issue with the fact that he was sending it to me in Microsoft Word format (whee, I get to see all the revisions they ever made to it). I pointed out to him that I was a Unix person, this was a Unix job, and he was a recruiter doing more than half his work with Unix positions, and he wanted me to run Microsoft crap? So I ended up having him pull up a copy and asked him about some clauses in it (he was patient enough to do this, surprisingly). I focused on the non-compete and asked him if there were any clauses that made it only apply if I got the job. There were none. So I explained to the recruiter that "If I interview there having signed this, find out what this secret area of business is that they are doing, them I'm no longer allowed to work for anyone else in the same line of business, or even related, even if I don't get this job?" He paused for a minute and then said "I guess not". now I wished I had gone ahead and let him send me a copy of that.

    The immoral of the stories here are that companies will try to take advantage of you one way or another. And it's probably even worse during this current economic downturn (equivalent to a full blown depression if you look just at the high-tech businesses by themselves). Watch out for what you sign.

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