

Ask HN: Need IP legal advice - askhnthrowaway

(I am using a throwaway for obvious reasons and pardon stilted English &amp; style ... ;)<p>I joined a high end tech a few months ago. This is a established startup. We have SV presence and elsewhere. At least on its way up if not already arrived. None of the big names but well known in its niche. Smallish company in the low 3 digit head count range. The technical bench is solid and known stars here and there. Not public. Well financed, and pretty deep pockets.<p>When I joined, I was asked to sign a IP and confidentiality agreement, per norm. The agreement provided for my listing what I had done and been working on. This I did. A project that has been in the works for almost 5 years and is pretty novel in the general space was listed.<p>I never have been given back my counter signed copy and when I asked I was told it was being considered. (not exact words again for obvious reasons.) That was news to me as nothing was said verbally or in writing regarding that. I have reviewed the contract (and I am not a lawyer) and it says nothing about that. My recent email to an executive level about this has not been answered.<p>I have no idea what to make of this but as my work before joining and this company&#x27;s crown jewels are in the same  ballpark (distributed stuff) the idea that I should be talking to a lawyer keeps coming up in my head. This and bunch other things has kind of brought the decision to say my goodbyes to this company. I have started the process of making a transition.<p>I have written records and notebooks and some public comments (in social nets) and partial open source aspects of my work. I like to work to a state of completion before release so the entire project has never been out in the open.<p>I need advice. How to make the transition and also maybe leads to solid and aggressive lawyers in the valley who know how to deal with these matters. I am not rich, far from it. Thank you.
======
yebyen
Hold on. What do you expect to gain when you get back your counter-signed
copy? (Apart from reliable knowledge of what you signed... did you make a copy
before you gave it back?)

In my experience these types of agreements are usually very one-sided, except
for the consideration they offer. You haven't mentioned any consideration. I'm
thinking it's along the lines of "I agree to sign this piece of paper and hand
it to Human Resources director in exchange for... a paycheck." The agreement
you signed doesn't grant you any rights, does it? So what would you gain from
having a counter-signed copy? I don't see where you suggested that it would
allow you to assert any particular right at all.

I am not in California and I am not giving legal advice (as a non-lawyer, I
can't give legal advice, obviously.) But, as a person who is relatively new in
his career and still very low-level (not a Chief Officer of Anything,
certainly) I have signed lots of things that I don't precisely remember the
content, which sometimes contained ridiculous language, and that I never kept
a copy of, much less counter-signed. I don't lose any sleep over it.

That being said, if you have signed some non-disclosure agreements (and
particularly if you're not 100% sure of the content of those documents) you
will understandably want to tread carefully with those written records and
notebooks that you said you have. Good for you, this is another place where I
have failed. "Non-disclosure" does not mean "forget everything you learned."

If you think that you signed over the rights to some project which you had
worked on prior to signing on and being an employee of the company (it's not
clear from your post if that's exactly what has you concerned), you will want
to talk to a lawyer. Most of the time I think the boilerplate for these type
of IP documents are not about accepting non-disclosure of those types of
projects (which you own, unless there is also a bill of sale you haven't
mentioned), but _full disclosure_, eg. they don't want to be surprised long
after you are hired that you have and have always had relevant domain
knowledge that you brought in from previous experience, that could be
threatening to the company in the future.

So, hope this helps!

~~~
yebyen
The other thing to consider is that in California, if your dispute should fall
under California law, which I suspect from your post that it does... does not
allow or enforce Non-compete on termination agreements with no consideration.
You did not mention non-compete, but as a NY resident and when talking about
employment and IP, I must always assume that any dispute would center around a
non-compete clause rather than IP law, since copyright/patent/trademark are
all distinct and are already the law, even in the absence of any signed
document or consideration given. So I assume you can only be worried that your
agreement will restrict you from competing in the same space; and not that
(less charitably) you plan to abscond with some trade secret and publish
it/make it the core model of your new startup. In the state of California, it
is my understanding that you should worry less about that: non-competes are
not valid. A trade secret though, could be protected by an agreement that you
signed.

Again I am not a lawyer, but I went to Slashdot University back in the 90's
and 2000's... I am talking here only about non-competes with no consideration.
If there is some consideration (a severance package?) then it would probably
have been in exchange for something, and I'll admit there is a decent chance
there is still a valid non-compete.

But it sounds like you're keen and you'd know alright if you had accepted an
offer of some consideration in exchange for something like a non-compete. I
don't think those kinds of agreements can be made in California in exchange
for just your regular paycheck as the consideration, or as a term of your
employment agreement.

~~~
tptacek
I would be careful with this assumption. A reasonable concern the poster might
have is that when he leaves his current job, if he started a venture based on
his own IP, his previous employer could shut it down by suing him claiming
that they own that IP.

That's not an unreasonable problem. In fact, it belongs to a class of "worst
kinds of problems": the ones that only become apparent when you're first
successful, and threaten to render that success forfeit despite your hard
work.

~~~
askhnthrowaway
Thank you both for your feedback. Yes, Thomas, something along those lines
exactly, although given my personal history it would be more likely that it is
an open source project, but maybe something could grow from that.

am I being paranoid reading into their playing games with giving me back my
copy? And the surprise "consideration" business never mentioned in interview
or at any point prior to my asking for my copy? I have the email record of
sending that to them.

~~~
yebyen
I might have been wrong about the consideration business. I am looking for any
precedent about that, because I don't really know what I'm talking about, and
I found this:

[http://en.wikipedia.org/wiki/Non-
compete_clause#California](http://en.wikipedia.org/wiki/Non-
compete_clause#California)

A consideration is something (a payment, etc) which can be said to have been
given in exchange for fulfilling the terms of a contract. You would know if
you had received one.

The wiki post does not mention anything about consideration in California law.
There are three conditions that can cause a non-compete to be valid, and
that's not one of them. I could be reading too much into omission of this
standard from the list, but it would seem that payments would have to be
ongoing, and even perhaps that the only recourse if you should choose to
compete would be to cut the payments off.

I also found this:

[http://www.wsgr.com/WSGR/Display.aspx?SectionName=publicatio...](http://www.wsgr.com/WSGR/Display.aspx?SectionName=publications/PDFSearch/wsgralert-
fillpoint-llc-maas.htm)

I don't know if you have anything to worry about, you need to decide that for
yourself. This story is about a person who sold his business (one of the three
reasons a non-compete can be valid in California), worked as an employee, and
signed a separate non-compete restricting him from working with potential
customers of the company, which was deemed unenforceable under California law.

I don't think you're going to have anything to worry about, but I don't know
how much of their IP you do or might have. I think it would be unwise to
publish anything you produced while an employee of the company, that might be
their IP. Certainly going to cause you some delays if you have to re-implement
everything you've done since working there, in a cleanroom process, but if
it's something you want to pursue after you leave, it might be worthwhile.
Here's a good analysis of general situation similar to yours:

[http://hoviblog.blogspot.com/2008/10/clean-room-defeats-
soft...](http://hoviblog.blogspot.com/2008/10/clean-room-defeats-
software.html)

If you are not bound by non-compete, you probably have only two things to
worry about. Those are copyright and trade secrets. Educate yourself about
those two issues, and you should feel more confident about your position.

[http://levinebakerlaw.com/publications/post-employment-
non-c...](http://levinebakerlaw.com/publications/post-employment-non-competes-
unenforceable-in-california/)

This page seems to indicate you have a much stronger position than I first
thought. You have the right to compete, it's California. You haven't sold any
business, you were never a partner. So, just don't copy anything that's not
already public domain, and try not to leverage any proprietary knowledge
against your old employer that could be considered a "trade secret". Have a
good head about what's confidential and what's protected, and you should be in
the right. You may also want to read up on California's "Unfair Practices
Act"; though you haven't mentioned a non-compete. The more I read now, the
more surprised I am at how many rights you will actually have.

[http://www.littler.com/publication-press/publication/you-
can...](http://www.littler.com/publication-press/publication/you-cant-do-what-
california-summary-californias-virtually-nonexistent-)

~~~
askhnthrowaway
My apologies for having you search. I thought the original post made it clear
I am not using the exact term. They are "reviewing" the agreement is last I
heard and that was more than a month ago.

~~~
yebyen
No apology is necessary, this has always been a topic of interest for me. I am
glad to educate myself, I learned a lot from searching and reading.

You should be entitled to a copy of anything you signed, this is not up for
negotiation and no review should be needed. If you are quitting, I suggest you
get an exit interview, and negotiate a fat severance package. They are not
entitled to keep you from practicing your livelihood.

~~~
askhnthrowaway
Going through your links, btw. Thank you kind human.

