

Employer stealing my 4 year old side project - minton

I've been working on a side project for nearly four years now. About a year ago I signed an employment contract with my new employer. This contract contained that standard clause stating whatever I work on belongs to them even if I work outside normal business hours.<p>My employer said he's cool with me working on side projects and that he has no problem with it. However, I do not have this in writing. I thought this was good enough until...<p>Recently another co-worker, Tom, was laid off and my employer brought up the book Tom had written and said technically it belonged to him. This scared me enough to realize I need to get something in writing and fast.<p>That leads me to the question on what exactly should I have him sign? Do I really need to get a lawyer to draft this or can I put something together myself?
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vph
>My employer said he's cool with me working on side projects and that he has
no problem with it.

He could be cool and having no problem with your side job, and still claim
ownership of it.

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chmike
You should check your IP laws in your country. I'm in France but IP principle
must be common to many countries.

As soon as you create something, you are the author and you own the IP. Your
employer can only claim ownership if the creation was made during an explicit
(written) mission to do so, by contract or if the creation was made by using
"means" of the company (e.g. PC, data, time,...). The burden of proof is then
on your employer, not you.

You can retain partial ownership if you can prove that only part of the
product were made in the condition yielding ownership to your employer.

Remember that it is the employer that has to justify his claim of ownership,
assuming you are the author and this is not contested. If such physical proofs
would by accident disappear, then your employer could have a hard time to
claim any ownership. But keep in mind the perfect "crime" doesn't exist. He
might have copy of your stuff, witnesses, mails referring to the creation,
etc.

The best would be that he never heard of your side project in the first place
and that you never used any means (e.g. PC, data, storage, time,...) of the
company to create and work on your stuff.

Now you know why it was 'Ok' for him that you worked on your side project.
Don't waste your time with written things. Get your stuff away of him, if it
is still possible. You will be in a much better position to negotiate if this
should happen.

~~~
agf
In the US, you also need to look at state laws. In at least Illinois, there
are limits on what an employer can claim ownership of, no matter what the
contract says.

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johnrgrace
Go back to the employment agreement you signed, read it. There likely is a
"notify us about outside stuff" language in it.

If your project is closely related to your job or business your company is in,
you have problems. If it's likely or is worth a lot, you have problems. If
you've EVER used company assets to work on the idea you have problems.

What you need your boss to sign is a simple letter that states work related to
the fields of XYZ is not a part of your job and (there likely is some contract
language from your contract) not claimed by the employeer. If the idea has
value, I'd spend a few hundred dollars going to a lawyer.

I'm meeting with my lawyer tomorrow to discuss being proactive about my
current project which I started after I left my previous employeer, but I want
to play defense now when it is cheap vs. later when it may be expense and time
may be short.

If you're ever going to go ask for VC or Angel money this likely is something
they'll catch durring the process and then you'll have to go back to deal with
it when the costs are higher and time is short.

If you happen to work for a really big company the HR department might
actually be able to help you, but talk with a lawyer first.

~~~
alok-g
Disclosure: IANAL.

Adding to John's message above:

>> Go back to the employment agreement you signed, read it.

Not just read it but make sure to read it very carefully. There are terms
frequently used in such contracts that look like normal English (or other
language) words but may have very well-defined and specific legal meaning.
Examples would include "work", "inventions", "work for hire", etc. Generally
you can find definitions of these online, including in Wikipedia, and also
sometimes in the contract itself.

The contracts also often have a place for "excepted works / inventions" where
you can write things that you would want to exclude from the contract. Be
careful again of the precise contract though as:

1\. The exceptions are generally intended for work you did "prior" to
employment by the company. Anything you do after joining may not be covered in
this form.

2\. As John noted, you may still have a requirement to disclose any excepted
work you do within prescribed time limits to the employer.

3\. You may have non-compete clauses which prevent you from working on things
related to the employers line (or anticipated line) of business. This bears
another example where people often misinterpret -- They claim for example that
their side project is on end-consumer software application while the company
products are enterprise related [Hint: Do not go by your or normal language
definition of "related". As far as legal world is concerned, "software" may be
just one category. A good check, though probably not correct, would be to see
which line of businesses the employer's trademarks are registered for.]

To summarize:

1\. As John said, better to discuss with a lawyer.

2\. Even with '1' above, go read a book or two. E.g.:
"www.amazon.com/Intellectual-Property-Open-Source-Protecting/dp/0596517963/"

3\. Do not blindly fill the excepted works/inventions form. It by itself may
not save you. You may need a separate agreement in writing stating something
like "Employer has no interest in your side project and does not mind you
working on it on the sides". Make sure also that your side project is well
defined in this new contract -- My guess is that over including or under
including would not be good ideas.

4\. There have been previous discussions on HN. I would have found some for
you but need to rush right now.

Disclosure: IANAL.

------
bdunbar
_my employer brought up the book Tom had written and said technically it
belonged to him_

I'm assuming this was stored on a company-provided computer?

IANAL but to be clean you should impose a firewall between employer-provided
equipment and your project. Do your coding or book writing on your own
computer.

Legal issues aside, it makes it harder for them to get their paws on it. And
if you're fired you've still got access to it.

------
WayneDB
Open source it.

~~~
rst
He can only do that if he has clear legal title to it --- and the issue here
is precisely that he's signed a contract which may give the employer first
dibs to appropriate it.

(Beyond that, things get into murky "consult a lawyer" territory very quickly
--- the precise language of the contract may make a real difference. And so
may questions of jurisdiction; California law is more employee-friendly than
elsewhere in the US, but you can't necessarily take that to the bank without
checking the contract and the circumstances.

Things get a whole lot easier if you can get the employer to sign papers which
formally waive their claim on whatever-it-is --- but ideally, you'd consult a
lawyer on the wording of the waiver. I've got one for my own open-source side
projects, but it hasn't been legally vetted for third-party use, so I'm a bit
reluctant to share it...)

~~~
debacle
Open source it now, before the employer tries to stake a claim, and the
employer will have a hell of a time trying to rein it in.

But I agree, getting your employer to sign something is the best bet. Even
getting it in an email is better than just verbally.

