What can I do about my employer's intellectual property policy?

Question

I've just started a new job, and the company's policy is that they own all intellectual property I create - whether I create it on their time or on my own. That means I can't contribute to open source software, since I can't give away their property. Has anyone experienced this? Does anyone have suggestions on how to convince the company that their approach is wrong?

It's not that they're completely ignorant of open source: they have funded internally-developed open source projects.

Some of the use cases I've come up with that are prohibited:

• work on open source projects on my own time
• contribute a small fix to a project I use at work
• ask a question on a forum using example source code I've written
• write and perform my own music, since that's intellectual property, too!

Answer 1

I'm not a lawyer, but - is that even legal?

It's normal that they own anything you do while working for them or on their machines, but when you're home after work, using your machine, they normally are not able to own anything you do.

Answer 2

have you signed the contract? If not ask them to amend it for the above reasons! Be a bit tough on this - we allow variations on IP. We just maintain that IP is within work time using work resources!

Answer 3

@Michael - depends on local employment laws and terms of contract and is quite legit. Many employers are happy to have exclusions though.

Answer 4

In Germany this is illegal and I cannot imagine that it isn't in the US (ok, IP is handled differently in Germany than in the US, but nevertheless). Talk to them about your point and if they do not get it: Go to a lawyer or search for a new job.

Answer 5

It can depend on if you get anything, payment or other thing , in exchange for agreeing to that deal. As I understand it a deal do not stand up in court unless it is a two way deal. A one sided deal is not regarded as fair . Well, this is what I belive is the case here in sweden.

Answer 6

Lots of companies have rules like that, but in the UK (and EU) they're not enforceable.

You own anything you do outside of company time as long as you don't use company owned resources.

What you really cannot do is contribute to a competitor's product (including open source) as that would be likely to be gross misconduct.

You can contribute to non-direct-competition open source projects. If you've added to an open source project so that your work can benefit from it I think you should contribute it back to the project. You can't post a copy of any code you write in work externally.

Answer 7

Unless you're working for some place with High security/secrecy needs, then I'd bail and work somewhere else - any place that has those kind of restraints in place, isn't going to be a great place to work long term.

Answer 8

I'm not a lawyer, but - is that even legal?

Unfortunately yes!! It shouldn't be but it still is. One of the best examples is that Steve Wozniak worked for HP at the time he designed the Apple I... as such he was required to give them "first rights" to his design! Fortunately for him and Jobs, they thought it was crap!!

Some companies really do stretch the limits of this, and the laws definitely need to change. But what they are trying to do is cover themselves legally in the case that you did do something on company time and release it under your name, but they can't prove that you did it on their time...so by owning everything you do, they've covered that issue.

Personally I wouldn't work for a company that does this...I've got too many side projects that I enjoy working on and would not want to give up. And it's not far from slavery in my mind. I've actually tried to simply cross out those sections on a contract in the past (which is entirely legal and if they sign it that way it is binding) but they would not sign it without those sections intact... so I walked.

Even if you have signed it...go to them and tell them that you have researched it more and have concerns. They may be willing to work out a deal with you, you never know unless you ask.

Edit: One thing to keep in mind...to CYA, never work on anything that is your own while at work or on their computer...even it you are at home with your company laptop. Even if the company doesn't have these rules, like mine, if you release something and they then find out that you did use company resources, whatever you created is theirs...and possibly even anything you created in the past. It can be real mess. Oh, and make your whatever you do is in a very different business segment from your work...anti-compete laws can be a bitch.

Answer 9

Like the recent case involving non-competes, these kinds of "agreements" aren't necessarily legal, but proving so will often require a lawsuit and trial in front of a judge.

As a more practical way to resolve the situation, I know of many people who have had a lawyer draft up an amendment to that agreement. The amendment specifically exempts work done offsite, using all personal equipment and none of the employer's existing intellectual property.

In most of those cases, the employer was OK with the amendment. In a few cases, they also insisted on something of a non-compete clause so that the employee couldn't launch a competing product.

I personally have avoided signing by pointing out the absurdity and asking for explicit permission to own the short stories, poetry, photography, songs, paintings and the novel I dabble with on the weekends. I got the reaction of "Well, that's not what we meant." I replied, "That's fine, but what you mean and what this contract state are apparently 2 different things then." They let me stay on without agreeing to it.

Of course, I also know of a lot of people who work in such companies who manage to "forget" to sign the paperwork about IP ownership long enough that everyone just moves on.

Answer 10

I hope they pay you like you're Bill Gates, because that policy is just plain out retarded. Why you cannot work for open source projects just blows my mind. Are they afraid you'll use some for loop somewhere in an open source project ?

They actually should pay you more just because you take the effort to contribute and train yourself at home...

I don't know, it's your call of course, but I would strongly object to those policies...

Just my 2 cc ;)

Answer 11

My advice would be not to worry about it (although as was already said, don't do this on company time/equipment under ANY circumstances), and if you're questioned or they attempt to assert ownership over something that yours, make a giant pain of yourself and they'll more likely just go away and leave you alone.

There are lots of ways to do this. My personal favourite is dumping a bunch of code that's out of order on them, or which I worked on with someone else (which means I can give them, at most, 50% of the actual code I have), or to print everything out in 36-point font and give them a mile-high stack of paper. They may be able to force you to give them your intellectual property. However, in my experience, most companies neglect to specify HOW you have to give it to them, and it's always just assumed that you'll give it to them in a coherent form that they can use... except that this is never stated, which gives you a BIG out.

Answer 12

Keith said

Lots of companies have rules like that, but in the UK (and EU) they're not enforceable.

I am not a lawyer, but as it happens we are currently in the process of reviewing our employee contracts and we do have a real lawyer looking at the process. We recieved the following advice from him earlier today:

Where there is an issue as to whether an employee or their employer owns IP rights in the output of their work, legislation in the UK generally favours employers. For example, in general terms, relevant legislation gives an employer automatic ownership of, copyright, patents, unregistered designs database rights and registered designs in works created by its employees in certain circumstances. However, the high incidence of claims over employee IP rights means that the position also needs to be looked at carefully here.

Particular issues arise where an employee makes or creates something outside his normal working hours or outside of his specific duties but which nevertheless could be valuable to the employer in connection with his business. Here, the employer may wish to ensure that there is an express provision in the contract of employment for the employer to retain ownership. Care should be taken here, however, since if it is also outside the course of his employment or specific duties, this might be deemed undue influence, duress or restraint of trade unless valuable consideration is given to the employee.

Of course this is specific to the UK and hence YMMV.

Answer 13

@Michael Stum

I'm not defending either side here but... One reason that a employer may want such a clause is that, as with most creative jobs, "working hours" is a not really definable. Your mind (or mine at a minimum) works on problems at work, at home, while asleep and wherever. If you are on salary, it might be reasonable to claim that they are paying you for all this time so they might be able to claim that whatever you produce in that time should be theres. This gets a bit silly if they want to claim IP not related to your vocation but with regard to FOSS work by a programmer it is understandable. As for acceptable, moral, legal, reasonable and whatnot... that is a different question.

Answer 14

the legality of this varies state to state; some form of additional compensation is typically required (exchange of value) for there to be any merit; check with a lawyer in your area

i did encounter this situation in Florida many years ago, and pointed out to the owners of the company that by claiming ownership of anything i did on my own time, they would also bear responsibility for anything that i did on my own time. So if one of my hobby experiment virus programs ever happened to accidentally escape into the wild...they would be responsible.

the IP clause of the contracts for all R&D programmers was changed immediately.

Answer 15

I realized I was in this same situation after having already worked for several years at a Fortune 20 company. I asked for a new employment agreement striking this "we own everything" language, based on the argument that I worked in a state that allowed this claim while most of the people I worked with day-to-day were exempt because they worked in other states that disallowed it.

My request for a new agreement was rejected, but my employer did agree to formally release their rights on a case-by-case basis and did so after I submitted a list of hobby and open-source projects I had worked on.