[exratione]

Related: the abysmal state of IP clauses in developer contracts. This and the NDA bandwagon all stem from the same root sickness in society - the delusion that someone can own an arbitrary piece of information in the same way that they can own a physical object.

http://www.exratione.com/2011/11/the-miserable-state-of-inte...

The topic for today is the sorry state of affairs that the intellectual property behemoth has brought to contracts between developers (programmers, coders, pick your word of choice) and companies that hire developers. The standard legal boilerplate incorporated into every consulting, contract work, or full time hire paperwork I've seen in my years in the industry included one or more of the following declarations:

a) All intellectual property I produce during the period of work belongs to the company, regardless of its nature, regardless of whether it has anything to do with the work I am performing for the company, and regardless of whether or not I produce it on my own time.

b) All intellectual property I produce during a period of time (commonly some months) after the work ends belongs to the company.

c) All intellectual property I have ever produced in my life belongs to the company, barring that which is listed in an appendix to the contract.

d) I may not create intellectual property on my own time and be remunerated for it by anyone other than the company during the time I work for them.

e) The onus is on me to prove that I own any of my own intellectual property.

I sent back every single one of these contracts with edits to remove the obnoxious and grasping provisions, replacing them with some variant clause to say that "what I produce for you while working for you on your software is yours, and everything else is mine."

[saryant]

FWIW, I just signed an employment agreement with a major development firm which included similar clauses. I was about to reject it and ask them to send one without such onerous restrictions when I got to the end of the section which included a large caveat "This section shall only apply to work performed on company time with company equipment," just in more legalese.

As a graduating college student I've heard others getting similar wording to allow for the employee to work on personal projects outside of work and retain ownership. Maybe things are getting better?

[Duff]

Generally people do obnoxious things like this for three reasons.

1. They are a bunch of jerks. 1a. Legal counsel within the organization is too strong. 2. Their counsel advised them to seek the most advantageous terms for the company possible. 3. It's something to haggle over that isn't money.

IP is a murky area from a litigation perspective. Its difficult to distinguish intellectual things created outside vs. inside, so the "solution" from a lawyers pov is to buy all of your intellectual property. (ie the lawyer version of "Kill them all, let God sort them out.") Since employers have a lot of leverage, and employees who aren't collectivelly bargaining are usually scared/too lazy to negotiate, it usually works out.

[harryf]

> "This section shall only apply to work performed on company time with company equipment,"

The question then is who has to prove company time and equipment were used? Employer or employee?

I ask because practically its going to be a grey zone. If you accessed your private gmail account during office hours and happened to see you have a potential customer lead for your out-of-hours project, are you in violation?

[wpietri]

Technically, yes. Practically, it only matters if they decide to sue you and can prove you did it. Which will probably only happen if you end up doing something competitive. Or if they're dicks.

In your shoes, I'd keep them very separate. A friend has a work smartphone and a personal smartphone for just this reason. But beyond the technicalities, it's only polite to stay focused on your employer's work while you're at their place or otherwise on their dime.

[rscale]

As a counterpoint, I recently wound up refusing to sign a contract that was an absolute mess. The prospective client wanted absurd things, like for me to indemnify them against any future IP litigation, whether I infringed on a patent knowingly or not. And they wanted ownership of every piece of code I typed, according to their contract I couldn't even hit backspace unless I committed the mistake first.

We never reached any middle ground. This happened months ago, and they're still looking.

I assume they'll continue to have this problem, because they're trying to hire a senior level person, but they want that person to make junior level mistakes wrt to the contracts they'll sign.

[netdog]

A few years ago a potential client produced a similar contract, wherein they wanted me to indemnify them against any future litigation regarding possible copyright/patent infringement. I explained my position this way:

You want me to produce a work for hire, which you will own. Since you will own it, you will also own all the potential profits you may be able to derive from the work. Therefore, it is appropriate that you also own all the potential risk of losses. You are asking me to carry a share of the potential risks, but without any share of the potential profits.

They decided to look for someone else.

[X-Istence]

I was asked to sign a contract like that and I had my current employer change it so that it didn't include those lines/words.

I can't indemnify someone against patent lawsuits. I can't know whether the code I am writing that is coming out of my head is in a patent somewhere. Not only that, but the contract asked me to assign to the company any and all ideas/thoughts/previous work that may or may NOT be relevant to their line of business and that by signing I had agreed I had done so (not even to the best of my knowledge, so if I forgot to give them a text file that I wrote years ago with a great idea then I'd technically be in violation).

Under no circumstances am I going to sign over any part of my work prior to the employment contract, nor am I going to sign over work that is completed on my own personal equipment outside of company time that isn't for the company.

To me it just felt like they were overreaching, and the guy I was discussing this with told me that wasn't their intention and that I should just go ahead and sign it because they would never hold it against me, and I told him no, I told him to go fix it, then maybe I'd sign it.

[rscale]

Sounds familiar, except for the part where your employer changed the words.

This offer also came with verbal assurances that it was just a formality so I should just sign it.

I offered them two potential solutions. I had my lawyer modify their docs so they'd be acceptable to me, and I also offered my own docs which are specifically drawn up to be just about as even-handed as legal documents can get (I sign regularly as both buyer and seller), but they didn't find either of the options satisfactory.

I'm somewhat disappointed that it didn't work out, because the work was very well suited to my background and the other team members seemed great; but if that's how management treated me while trying to convince me to join their team, god only knows how they would've treated me down the road.

After that fell apart, I wound up with a new primary client who was much more reasonable. They passed me lousy docs, and I asked if we could use my docs instead. After a reasonably quick review from their legal counsel and some minor tweaks, we were off to the races.

[rmc]

This offer also came with verbal assurances that it was just a formality so I should just sign it.

This excuse is common, and is nonsense. If they don't plan to litigate based on it (or hold you to it) (which is what they are verbally telling you), then they would have no problem with you scribblying it out. Their answer to that tells you their intent.

if that's how management treated me while trying to convince me to join their team, god only knows how they would've treated me down the road.

And how would they have treated you down the road if you had signed away all your rights and given them a golden ticket in the NDA?

[crdoconnor]

I've come across that contract before. I think it was actually a $20 download-a-contract-from-the-internet and they had no idea what they were actually handing me. When I pointed out what it was that it said and asked for it to be changed, they were fairly happy to comply.

[rmc]

Hanlon's razor. "Never attribute to malice that which is adequately explained by stupidity."

[joshfraser]

It's worth noting that many states, including CA have laws that say something to the effect of:

Anything you do on your own time, with your own equipment, that is not related to your employer's line of work is yours, even if the contract you signed says otherwise.

[phamilton]

Yes, But a contract forbidding outside consulting is still grounds for termination. You just know that they can't legally claim the work you did for themselves.

[kbutler]

Hasn't the whole US adopted "at will" employment? Basically, you can quit for any reason, and they can terminate you for any reason. No employment agreement violation required.

[_delirium]

Yes, though there are some differences between being fired for cause and merely having your employment relationship ended; for example, you can't collect unemployment benefits if you're fired for (a legitimate) cause. On the other hand, larger companies tend to make it a practice never to fire anyone for cause except in the most egregious circumstances, because they don't want to bother justifying it.

[kelnos]

To clarify, though, the list of legitimate clauses is pretty small, mostly "for cause" means they're firing you because you did something illegal in the course of doing your job. A firing isn't "for cause" because the employee (e.g.) showed up for work late too many times.