

Ask HN: Starting new job - advice on IP/outside business - conorgil145

I graduated college in May and accepted a position at a consulting firm in the Baltimore/DC area. I am in the process of completing/reading several forms before I begin work in mid July and I have some questions regarding a web site that I have been working on called Napkin Board (www.napkinboard.com) while I was still in college. The website provides an Amazon.com-style rating system that allows students to provide feedback on their dining hall meals. Napkin Board has the potential to generate revenue and could be seen as an outside business, but is currently just a website that I work on and is not a company. I would like to be sure that I will be free to continue developing it during my free time and turn it into a company at a time of my choosing.<p>Two main questions:<p>1) Proprietary Information and Intellectual Property form states:<p><i>5. I hereby assign to Company X all right, title, and interest in any developments, designs, patents, inventions, improvements, writings and other works of authorship, trade secrets, artwork, ideas, know-how, drawings, specifications, models, trademarks, copyrightable material, software (e.g., source code, object code, algorithms, flow charts and design documents), and Proprietary Information (“Company X Developments”) that I made, developed, or conceived, or I may make, develop, or conceive, during the term of my employment, whether or not made or prepared in the course of my employment with Company X:
- With the use of the time, materials, equipment, information, or facilities of Company X; or
- That relate, at the time of conception or reduction to practice, to any Company X product, service, activity, trade secret, actual or demonstrably anticipated research or development, business method, or other methodology; or
- That are suggested by or resulting from any work performed by me or others for Company X<p>I understand that the terms of this paragraph 5 apply to Company X Developments that are made, developed, or conceived solely or jointly with others, on or off Company X's premises, and during or outside regular working hours. I shall promptly disclose to Company X any such Company X Developments during the period of my employment with Company X and for a period of six (6) months thereafter. Notwithstanding the above, I understand that the invention assignment provision of this paragraph does not apply to an invention that qualifies fully under the provisions of Section 2870 of the California Labor Code or under other similar state law provisions.<p>6. Attachment A lists items of intellectual property (e.g., trademarks, designs, patents, patent applications, writings, copyrights) that I own or control and that I made or conceived before the date of my first employment with Company X</i><p>I do not expect this site to interfere in any way with my work at the new firm, but I would like to follow the appropriate steps to list the site and all of its associated material in Attachment A. How in-depth should I go when explaining the site and its associated materials (ie, the associated Android app, blog, etc)? Is this something you think I could complete on my own? Is my thought of contacting a lawyer just crazy, paranoid over-kill?<p>2) The Code of Ethics for the new firm has a section addressing secondary employment and states that:<p><i>Company X employees may not undertake secondary (non-Compnay X) employment in any capacity, including as an employee, consultant, owner, or independent contractor, with any organization, nor operate any business or professional venture, unless he or she receives advance approval in writing from his or her Officer</i><p>Is this something that I should ask the firm to help me resolve/understand before I submit my paperwork?
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anigbrowl
My goodness, a legal question with enough information to provide a meaningful
answer - well done! You should not rely on the following, as I am not an
attorney, but my unqualified opinion is:

Yes, it's a problem. Clause 5 means you are giving company X ownership of
_anything_ you think up in _any_ context during your employment and for 6
months afterwards. As well as the examples described below, that could extend
to things someone else does to which Company X argues you made a contribution
- you tell me about your favorite way to eat peanuts at a conference in the
company of another Company X employee, I launch a new snack food 3 months
later, Company X claims you made a contribution and as your implicit assignee,
sues me for the value of your input. In short, you must assume you have no
creative life of your own during employment.

Now, the reference to the California Labor Code refers to a piece of law
([http://www.leginfo.ca.gov/cgi-
bin/displaycode?section=lab...](http://www.leginfo.ca.gov/cgi-
bin/displaycode?section=lab&group=02001-03000&file=2870-2872)) that says
inventions which have nothing to do with your work can't be controlled by your
employer, and clauses in employment contracts attempting to exert such control
are void. This should get you off the hook, because under California law just
about anything you create is an 'invention'. But that might first entail an
expensive argument over whether your non-work stuff qualifies, the degree to
which it was truly and fully independent of your work, and (given that it's a
consulting company) whether it might overlap with any of their _clients'
business operations._

So you have a conversation with a Company X employee about his job consulting
for Hotel Chain Y. Later you make a slight improvement to Napkinboard. But
Napkinboard lets people rate dining halls, hotels have restaurants, and a
restaurant is like a dining hall...

Clause 6. requires you to list everything you might possibly need to identify
as your own creation before starting work; in other words, your current
intellectual property assets. I would consult a lawyer for this too. Sure, the
practical purpose is just to fence off your Napkinboard project, but is that
your sole creative work in existence? I mean, what about your copyright in
this 'Ask HN' post - especially as it may reveal something about the
operational methods and policies of Company X? It's their attorneys' job to
think in such broad terms if a dispute arises in future, so you should too.

Is that all of clause 6, or did you just cut it off there? If the former, it
seems like a bare-minimum acknowledgment of what's yours, compared with the
very comprehensive scope of what's theirs...and chances are that your haven't
formally registered any of your copyrights or designs, so the onus would be on
you to prove what does or doesn't qualify.

Re. the ethics code, I'd want some written acknowledgment of your rights in
and permission to continue working on your Napkinboard project. If a request
for this is brushed off with 'it's a standard contract' you can politely say
'great, I'll just run it past my attorney then and shot it right back to you.'
Obviously you don't want to get into a protracted negotiation that would
impede your ability to take the job, but nor do you want to hand them your ass
in a sling. 'Standard contracts' are written to serve the needs of the party
who offers them, not to be equitable to both parties.

Remember, I'm not an attorney!

~~~
conorgil145
I realize that you are not an attorney, but thanks for the long response and
advice!

 _California Labor Code..._

Does this affect me at all since I will be living in Baltimore, MD?

 _Is that all of clause 6, or did you just cut it off there?_

Clause 6 also says "See Below" and points me to Attachment A which has the
following default text:

 _Attachment A. I own or control the following items of intellectual property,
and I made or conceived these items before entering into this agreement._

Napkin Board definitely is not the only thing that I have ever worked on that
I care about, but I wasn't sure to what extent I should/could list everything
I have ever done. I have a personal blog that I write on sometimes (kind of),
I made a bunch of cool demos/programs while still in college (mostly for
class), I frequently give advice to friends working on their projects, etc,
etc. What is the extent of this Attachment A?

I read PG's essays during the summer before my Junior year and I have wanted
to start a company/work for a start up ever since. However, I wanted to get
_some_ experience before I dove in head-first. I decided that consulting would
be a good starting point because I could work on a wide range of projects in a
short amount of time. Also, I never want to write financial software and
Company X's offer was by far the best offer I received outside of that realm.
I was hoping that I could work in my free time to implement a bunch of ideas
that I have had over the past year(several web apps, a browser version of a
board game, iPhone/Android apps, etc), but it is starting to look like that
will be more difficult than I initially expected.

~~~
anigbrowl
_Does this affect me at all since I will be living in Baltimore, MD?_

Likely the company has HQ or major operations in California. Maryland's laws
on this may be different; but in a dispute with any firm you generally have
the choice of suing them where they are incorporated, where their corporate HQ
is, or wherever they have major operations.

As for the list, I'd throw on everything you can think of, including the
kitchen sink. All your software projects, your blog, stuff in your college
newspaper, your poetry notebook, whatever. You don't have to say what
everything is, just reasonably describe it, like 'various personal works of
prose and poetry written between 2005-2010', and also a statement reserving
your current and future rights. Not to be an ass about it, just to demonstrate
that you have a clear understanding of what belongs to you.

Remember the company isn't out to screw you, they're just protecting their own
interests and naturally they would prefer you to cooperate. If their offer is
good you should consider it and maybe just put your ideas on ice for a year or
two while you make some $ and get experience.

But again, consult an attorney - I can explain what stuff means in literal
terms, but not what course of action you should take or what other factors
might apply.

~~~
conorgil145
Haha great. I will start making a long list including everything down to the
comic book I drew in crayon when I was in elementary school :)

 _and also a statement reserving your current and future rights_

How do you think that should be worded? Maybe something like "I reserve the
right of ownership to any future projects, inventions, writings, etc that I
develop after beginning employment with Company X in such cases that the
aforementioned projects do not use Company X resources, do not compete with
Company X, do not negatively affect my performance on Company X projects, and
are strictly and independently developed during my personal free time"?

The offer is good, I just bought a car so now I have loans, and I am starting
in two weeks so it would be foolish to bail. I realize they have to do this
and I have no problem cooperating, but I just want to make sure I am covered
all the way to the kitchen sink :). Not working on some side projects for a
year or two would be extremely difficult for me. Hopefully, it is just a
formality and I can get it worked out. I sent emails to my team lead, the HR
department, and their help desk for new hires. Hopefully, I will get some
informative emails tomorrow morning.

~~~
anigbrowl
That's exactly what I had in mind; but please remember, it's no more than
instinct coming from me. You should definitely consult a professional to be
sure.

------
brk
_Is this something that I should ask the firm to help me resolve/understand
before I submit my paperwork?_

Yes.

Most of the time these sorts of things are just boilerplate CYA garbage. I
highly doubt they want your dining hall ratings website. I don't doubt however
that they want to ensure that you are primarily committed to their business
interests above your own.

If they stick on these terms, you'll probably also find that it's a shitty
place to work and will be little fun, and offer little rewards as well.

You should bring this up with them, and likely spin it that this site is a
low-effort sort of hobby of yours, and is a good platform to enable you to
stay sharp on new technologies and put different things into play in a live
environment. They _should_ understand that in the long run it is to everyone's
benefit that you have this little self-learning side project/hobby thing going
on.

IANAL, but I'm pretty sure their "Code of ethics" blurb is basically
unenforceable and pointless.

~~~
conorgil145
good point on the site allowing me to stay sharp on new technologies. The site
was/is used to teach myself Ruby on Rails, which they were pleased that I
already knew. I will definitely point out the benefit when I talk to them
about it.

------
Aaronontheweb
You should definitely get this stuff sorted out before you sign anything.

As one other commenter pointed out, much of this is CYA garbage to ensure that
you aren't using company resources to support your own extracurricular
activities.

As long as your company time is spent in accordance with the company's wishes,
I don't think they're going to take issue with you.

By the way, is this at-will employment or contracted employment?

~~~
conorgil145
I don't think they will have a problem with my irrelevant side project either,
but I like to cover all of my bases like you said.

I am a full-time salaried employee (not contract-based) and I am free to quit
at any time/they can fire me at any time. So I guess that is at-will, right?

~~~
Aaronontheweb
Correct. Contracted work for full-time employees isn't common, but I thought
I'd ask,

