Do I own copyright of program I made in own time?

Question

I created a software package that aids electrical engineers with common calculations used on site (substations to be specific). I created the package in my own time, without being asked and without guidance. The package is now widely used within my company and I intend to distribute it nationally.

Do I own the copyright? My contract does state that all work produced is theirs, but this was outside of work and outside of my 'scope of work'. My company is mainly a civil and construction company and had no influence in the creation of the program.

From comments: This is the paragraph "During the course of your service, you will disclose to the company all information, formulae, processes, inventions or improvements which you have learned, discovered or evolved during the course of your service or in connection with the business of the company and will sign any necessary documents to enable the company to obtain patent protection whether still in the company service or not. " They are taking it seriously and have got their lawyers.

UPDATE::::::::::::::: email just received

Dave,

As you know we've been pursuing the request you and your patent attorney raised earlier this year, paraphrased below:

... a patent attorney, who has advised me to seek official clarification from {redacted} over the IP and copyright ownerships before I launch the company. In effect, they will produce a legal contract which states all IP and copyrights are owned by my self in exchange for free copies of {redacted} for all MUS engineers. The free offer doesn’t extend to partner companies.

This review process has taken longer than hoped as we are obliged to review our contractual position with the {redacted} and also with our employer {redacted}.

However, {redacted} are willing to release all IP an copyrights on the condition that we continue to use {redacted} for our {redacted} engineers and receive a 15% royalty on the profits derived from the sale of {redacted} licences over a term to be agreed.

I am more than happy to discuss this proposal with you at a mutually convenient time, and we can use your legal advisors or ours to draft a IP transfer agreement.

Kind regards,

{redacted}

Answer 1

Don't rely on legal advice from random people on the Internet. You haven't even said where you are, and this particular question varies from state to state in the US. In California, the copyright would almost certainly be yours; in Texas, it would almost certainly be your employer's.

You need to talk to a lawyer in your jurisdiction that knows something about employment and IP issues. Bring your contract with you. It may not actually matter (the law may override the contract), but you don't know that right now.

Once you know what the legalities are, you need to decide what to do. You may decide it's not worth annoying your employer, or you might smooth things over. It's impossible to say from here.

Answer 2

As @Frustrated said, only the lawyers can decide this, but given that the package is now widely used within the company, it may be the case that your employer will see this as an opportunity to keep a useful tool away from competitors and prevent it from being distributed. I know that sounds trivial and jerky, but that is often the way that business people think.

I would consider it to be probable that your employer will attempt to assert ownership of the software. The mere fact that it is widely used inside your company will given them ammunition and motivation to make that argument.

Answer 3

David - the difficulty you are in is considerable, after reading the various comments here.

Firstly, in the UK, as far as I know the common law (so going back a damn long time) pretty much gives the employer the fruits of your labour - irrespective of the hours of the day when you spent your time. This (so I am told) goes back to the old days of master/servant, where the servants output was the property of the master. Employment is effectively a master/servant relationship.

Notwithstanding this, there are a bunch of other factors:

Firstly, you have a clear statement in an employment contract, this clarifies the position of the employer, and they will own pretty much anything you do related to their business. (This is normal.... for example, if your employer makes cricket bats, and you decide to go home and make bats that look different then tough luck to you, but if you build model trains then its clearly unrelated.)

Next, you took it through the right channels and the company didn't want to do anything with it, and gave you permission to do what you wanted. (Your failing: not getting that in writing). HOWEVER, there are such things as verbal contracts and you stand a good chance of being found in the right, especially because there should have been witnesses, and secondly because you did it all through the right channels.

Next, the company has PUBLISHED in a newsletter that you did this in your own time. That does not mean they implicitly assigned rights or anything, but it does make for an acknowledgement of the relationship, which a good lawyer should be able to exploit to your benefit.

Consequently, you desperately need legal advice to match the lawyers that the company is already throwing around. This will cost you, but you have 2 choices only:

• take 'em on
• hand it all over to them and walk away

I suspect if you were to do either option, the employment relationship you have has been soured and staying with them will be difficult.

This will cost you money. If you take them on and it goes to court, you might win. Just make sure you go for costs as well.

IANAL. You need one.

Answer 4

If you signed a document containing that paragraph, I think you're screwed. The program you wrote is "connected to the business of the company" and therefore by allowing the company to use it you have "informed" them (as was your requirement) and they have the clear patent right. You can fight it, but you agreed by your signature to this paragraph, which makes no exception for work performed outside course and scope of employment.

You have one shot: first, you must be able to prove that you created this software with absolutely no resources provided to you by the company. That means you developed it at home, on a computer you bought, with an IDE you paid for. Even if you were "clocked out" or working after normal hours, if you wrote any part of it on your work computer they own it, plain and simple, because you produced it using materials they gave you which belong to the company, and thus the argument is very strong, especially if you're salaried and exempt, that you were simply working extra hours for them. You may even be in trouble if you took home a book from their technical library containing the calculations you integrated into the program; it's weak as most academic knowledge such as electrical physics equations is public domain, and thus you could have gotten it from anywhere.

Then, you have to argue that the agreement is infringing on your ownership rights by laying claim to property you own which is separate from your course and scope of employment. It would be equivalent to them saying they own your car because you bought it with the money they paid you and you drive it to their workplace every morning; absurd. Now, they will try the counter-argument that if you had not been working for them, you would not have developed this program. It's a weak argument by itself but it establishes a link to the program and your employment, allowing them to go back to your employment agreement. You will have to refute that, probably by stating that you did it because your work in this field is part of who you are as an individual, which is seperate from your work. That will require some evidence that you were an EE, or worked closely with them, before you took your current job, and that you will continue to be so or do so after you leave.

It's a sticky situation, and IMO you should be prepared to lose. If you do lose, understand that you can't just re-write the program, first because that will create a "workalike" that infringes on their IP, and second because you will be violating your non-competition clause.

Good luck.

Answer 5

First off, I am not a laywer, but I think the following might be a big problem for you:

I created the package in my own time, without being asked and without guidance. The package is now widely used within my company and I intend to distribute it nationally.

Regardless of if you wrote the problem on company time or not, which is it's own legal quagmire, as soon as you brought the program into the office and allowed others at the company to use it and to provide you with feedback on it, you blurred the line between "your time" and "company time". This is pretty much where you really need to get a good lawyer if you want to try and fight and distribute things on your own.

However, you might also want to see if the company is willing to cut you a deal and just pay you some sort of significant bonus or other form of compensation for the program and be done with it. Unless you are certain that the software is worth enough to justify the time, effort, stress, and likely money out of your own pocket, that might be a very agreeable route to take that would smooth things over with everyone involved.

Answer 6

This is hard to answer without access to the contract you signed with your company (the one with all the non-disclosure, non-competing stuff in it). From what you have said, it sounds like you're in the clear. But you wont' get a definite answer from stackexchange; you should ask your employer or revisit the contract if you have a copy of it (or ask for one).

Answer 7

IANAL, but it would be really hard to prove in court that you did something on your own time, and it would be even harder to prove that things you learned on the job in no way contributed to creation of this software package.

With that being said I have heard about people who claimed IP and were financially ruined by legal action brought against them from the company they worked for.

In most cases though the company will either not know about it or not care about what you are doing until you actually are ALREADY SUCCESSFUL and made a boat load of money. At that point they usually sue and you have enough money to afford good lawyers who can probably get them to settle for a piece of the pie.

It's a roll of the dice but the stakes are high. I might do it if I were single and didn't have a family.

Answer 8

In the US, a lot of this would typically depend on something you haven't told us: whether you used company resources in writing the program. For example, if you stayed after work, and wrote the program on their computer, using a toolchain they licensed, etc., then chances are pretty good that it would be considered theirs, even though it wasn't a required part of your job.

If, however, you wrote it on your own computer using tools licensed to you, then chances are pretty good it would be considered your property.

Since you're in the UK, it appears that other questions are probably more relevant. According to the relevant law, it seems to depend upon whether the work can reasonably be claimed to have been done "in the course of his [i.e., your] employment". It looks like that, in turn, depends primarily on whether your terms of employment say you needed, or at least could be expected, to produce that software or something similar as part of your job.

My immediate guess based on the language you have quoted is that the rest of the terms of employment will be sufficiently vague that it will be difficult to exclude the software from your scope of employment, so your chances of prevailing in court would not be particularly good.

Don't take that as legal advice though -- I'm not an attorney, and even I was I probably wouldn't be accredited in the UK. In the end, it boils down to one rather simple bit of advice: when you do talk to a solicitor, you'll really need to take along a copy of the contract or terms of employment, or whatever paperwork you got that specified the scope of work you were being hired to do. That will be the key element in deciding who owns the software.

Answer 9

The clause you have provided refers specifically to patent protection, not copyright. Do you have any other clauses that specifically mention copyright, or which limit competition? (patent and copyright are quite different)

The invention cannot be patented now, as it's in use, so the clause can have no effect.

You have not clearly stated why you are asking the question. Do you want to sell you software to someone (a competitor or you company), retain control or something else. Your motivation will significantly determine your coarse of action. I would suggest that in the first instance informally talking to you boss about what you want to achieve is a great first step. If you are trying to screw him, maybe not... It is impossible to tell who owns the copyright to the work (very likely to be the company), and determining that will almost certainly cost more than it is worth in legal fees, the more it's worth, the more legal bills, the fees will stack up accordingly.

You really need to come to an agreement before you see a lawyer to formalize it.

Disclaimer : I am not a lawyer.

Answer 10

Finding a lawyer that will tell you that the code is yours is as easy as finding a lawyer that wants your money. Truthfully, your rights to the code are only what your company allows your rights to be. If they are lawyer-ed up already, they are telling you in their own way that you can't afford to fight them on this. As an EE I can see your program being useful, but don't see it being worth legal fees as well as income to fight the company on this.

Answer 11

You should own the copyright since you wrote it on your own time. However, consult a lawyer as this is a very messy area and one where, sadly, corporations tend to win because they have more money to throw around.