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Losing My Software Rights?
Posted by
kdawson
on Tue Dec 02, 2008 10:24 PM
from the work-for-hire-but-not-for-you dept.
from the work-for-hire-but-not-for-you dept.
vintagepc writes "Having written a piece of software as part of my research employment, I now face (and will later face again, with other software I've developed), the issue of intellectual property rights. The legal department stated that if I was paid by the University to produce the software, the University would own all rights to it. This is supposedly black and white, not a gray area. However, I was hired as a research student, not directly by the University, and also via a research award (NSERC). Furthermore, it turns out that faculty members here, in fact, retain their intellectual rights to any software they write. At this point, I can still back out, since I have not explicitly agreed to the conditions, but this decision must be made soon. So, I turn to the Slashdot community to ask: Are they allowed to completely strip my rights to the software? If anyone has had any similar experiences, then what was the outcome? Additionally, is this a normal action, or do I have some maneuvering room?"
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Negotiate. (Score:5, Insightful)
Re:Negotiate. (Score:5, Funny)
I'd prefer a three way agreement.
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EULA style (Score:5, Funny)
DISCLAIMER: By reading this post you agree to Great Grandparent post.
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Re:Not always. (Score:5, Insightful)
well, obviously they can't claim rights to code that they didn't fund the development of. that doesn't seem like what the University's policy is.
the lesson here isn't to not sign anything you don't agree with (that's just common sense), but rather don't do public research if you're not comfortable with doing public research.
the NSERC seems to be a government institution, so all research that they fund is by definition public research. naturally, academic research is going to remain in the control of the academic institution where it was conducted. this is done in order to keep publicly funded research free and open to everyone in the spirit of academic openness and to facilitate scientific collaboration. you can't accept government funding and then turn around and decide you don't want anyone else to have access to your research. it's not fair to taxpayers for them to foot the bill for proprietary research that is not made available to the public.
in the context of software development, i would expect the university to release the source code under some kind of open source license. if it's a BSD license then the developer who wrote the code should still be able to commercialize his software if he wants to. he has every right to make money off of his code. he just doesn't have the right to accept research funding from taxpayers and then renege on the agreement to make the research/source code public. besides, it would really hinder scientific/technological progress if all public/academic research were tied down with patents and copyrights. waiting 15-20 years after a scientific breakthrough is made before another researcher can build upon it is just impractical.
it's really no different from being paid to do software development for a commercial company. if your employer pays you to develop the software, you can't expect to retain the rights to the code you just sold to them. i mean, what are they paying you for?
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Re:Not always. (Score:5, Insightful)
The researcher is paid to research new IP. That is their job. Therefore any new research belongs to the employer. The cleaner is employed to clean. That is their job. Therefore any new research belongs to them.
Not that difficult to understand.
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Re:Do what the rest of us scientists do, publish (Score:5, Interesting)
Having been through this, there are three likely outcomes in decreasing probability.
Assuming the latter greatness, in my experience the likelihood of the university patenting your algorithm is vanishingly small. But if they do, great! You are a young researcher with a patent. Chances are the Univeristy will profit share ( in theory at least. At one institution the patent office made just enough money to, you guessed it, fund the patent office ). If they don't, you are a young researcher with a patent. Sounds like graduate school gave your career a boost. Ten years down the line I'd rather have a patent under my name than the software I wrote.
In either case, publish. Publishing is the GPL of the academic community. I have had greater success making my source code GPL when I talked to my principal investigator about supplementary materials for publications than at any other time. If this fails at least you'll know whether the algorithm is patented before publication, if it isn't, you will be able to use the algorithm in the future free and clear. If it is, I'll repeat myself: you are a young researcher with a patent AND a publication.
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Re:Do what the rest of us scientists do, publish (Score:4, Insightful)
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Re:Do what the rest of us scientists do, publish (Score:4, Insightful)
While I agree with the majority of you post...you have me completely baffled at your taxpayer comment. What tax system would you propose we use that doesn't 'hurt ourselves'? And with Obama coming into office...I don't think the system in place will be very friendly to "the rich"..who already pay a disproportionate amount of the US tax.
Anyway, please elaborate...
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Re:Do what the rest of us scientists do, publish (Score:4, Insightful)
While I agree with the majority of you post...you have me completely baffled at your taxpayer comment. What tax system would you propose we use that doesn't 'hurt ourselves'?
He's saying that the lower and middle class vote for and generally support tax reforms that would only benefit them if they were considerably richer than they currently are, and actually hurt them at their current income level.
Ask any blue collar democrat or bible-belt small town republican or white-collar pointy-haired-middle-manager middle-class joe average whether he thinks we should scrap progressive tax and switch to a flat tax. The number that think this would be a good idea is shocking, given than it will only reduce the tax load on people wealthier than them, and shift that load onto them.
Either these people are categorically bad at math (which is probably true), have delusions about how wealthy they actually are (everybody thinks they are "upper middle class"), or have unrealistic expecations about how wealthy they will be in the near future).
In truth its probably all of the above.
And with Obama coming into office...I don't think the system in place will be very friendly to "the rich"..who already pay a disproportionate amount of the US tax.
The vote for Obama vs McCain was a lot more than simply picking a tax plan, so we can't and shouldn't really equate voting for Obama with understanding how tax reforms will affect them.
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Re:Not always. (Score:5, Interesting)
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Whatever you do (Score:4, Insightful)
get it in writing.
Guess what... (Score:4, Insightful)
Talk to a fucking lawyer.
Or back down.
attorney - and you're probably wrong. Fail. (Score:5, Interesting)
several posts say talk to an attorney, in detail, when they can READ your contract, and they're right. IANAL. However, since this is the Internet, I want to take this opportunity to point out several substantial flaws in your submission.
0. Posting here and not getting an attorney. Fail.
1. A purely ownership and non-personal right like this, it's very unlikely there's any prohibition against you signing it away. (Unlike, e.g. some noncompetes which are SOMETIMES unenforceable.) Fail.
2. If you sign this when you obviously (and demonstrably - you posted it here!) thought they intended it to mean you had no ownership, the courts will not look kindly on you turning around and saying you don't believe that. That's called 'bad faith'. Even if the contract WAS weak, if it's clear that both parties understood the same intent, usually that's what happens.
And there's a good reason for that. Knowingly signing that when you clearly believe they mean that if you don't intend to carry it through makes you a liar.
Fail.
3. That the faculty, who have a totally different contract, get to keep their work has no bearing on your contract. Fail.
4. The faculty don't even meet the standard you set out - which is 'if you're paid TO develop software' - which they aren't. They're paid to uphold the educational mission of the institution and do their research. The actual software is (at least contractually) secondary.
I'm not telling you not to take the job -
I only see two glimmers of hope here:
- If the UNIVERSITY's contract with NSERC specifies something different, you count point that out to them.
- I don't know if this is in your goalset, but depending on the U, if you WANTED to open source your project (whatever license) the U may allow that - and you MIGHT be able to get them to approve allowing that BEFORE hiring you. YOU will still own none of it. They'll own all the rights to sell a closed source version, etc., and they could un-open-source their future versions. (Which, if you were GPL, no one ELSE could legally do) But they can't exactly 'unlicense' the code they agreed to release.
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Re:attorney - and you're probably wrong. Fail. (Score:4, Informative)
I've run into a number of bad contracts and have been unable to afford a lawyer, and was willing to accept pretty much anything just to get working again. All of the flaws you mention are things that have come back to bite me in the ass (well, except for the asking slashdot part).
I've learned that keeping any rights to commercially developed software is unlikely unless you have some kind of weight in the business community. Learning what that really means sucks hard, and that's why I believe that Free Software is ultimately better -- it's not produced in software sweatshops, where the true genius will never get compensated, either in ego, or in money for the full value of their work. Of course, that's why I no longer work in IT. There's plenty of money someplace else, and you'll be treated like a person and not some code creating machine.
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Re:attorney - and you're probably wrong. Fail. (Score:5, Insightful)
It sounds like adults are required to use language rigidly, express no emotion, and generally not have very much fun.
How about we pretend to be rational instead?
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Re:Guess what... (Score:5, Insightful)
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Re:Guess what... (Score:5, Insightful)
then he needs to take a job where you don't need a lawyer to look it over. Live within your means.
That being said, seeing how this is a university, there are law students and law professors who can look it over and make personal recommendations without acting as your lawyer. Of course you get what you pay for too. On the other hand, he can specifically state that he won't work under those conditions and he wants at least some control over his software if it is done as part of his as secondary to it. Namely, he wants all publishing rights for a period of time (5-10 years) and a cut of any proceeds if they attempt to market his software. On the other hand, he can offer to give that in exchange for keeping his own copyrights.
There are probably two main reasons why they want to keep the copyright. One is so you don't take what they are hiring you for and turn it into another enterprise and the other is so that you can't take your ball and go home. Giving them a perpetual right to use it and limited control over it's use will probably satisfy their needs unless this is some quasi business ordeal where they are planning on making money from your work.
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Re:Guess what... (Score:4, Informative)
There are plenty of good paying jobs that don't require a legal degree or the loss of copyrights. This is something that you need to think about before you get there or at the time when you realize it is needed. Of course learning about it yourself is always an option. I watched a 46 year old construction worker who started off working for someone else and ended up working for himself, and is now dealing with millions a month in contracts put himself through college to study contract law in his spare time just so he could better understand what he was getting into. He is now a fully licensed lawyer but still used other lawyers.
You don't need to become a lawyer but you should know enough to pro se on common things. Of course that won't be enough when shit hits the fan but it should lessen the need to get a lawyer. Know enough to know what your getting into and know enough to know when you need help. It is really just like knowing how to change a flat tire or put gas in your car if your going to be driving. Those of us who won't be in the position don't need to know, those that will do need to know or they need to be able to pay someone else that does.
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Re:Guess what... (Score:4, Insightful)
$350 spent now may save many many thousands later ...
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Re:Guess what... (Score:5, Informative)
Yes I can. Read the contract, strike out with pen the parts you disagree to and initial next to them.
sign it and give it back after you make a copy.
All done, if they sign it, they agreed to the changes you made by removing parts in striking them out. I do it at every job I have been hired into, the contract is never 100% acceptable to me. Only a fool believes you have to agree to a contract as-is. even bigger fools believe you have to use a lawyer to do such things.
Grab a pen, start removing parts you dont like. It's quite fun.
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OPEN SOURCE (Score:3, Informative)
Re:OPEN SOURCE (Score:5, Insightful)
Even if I have to rewrite 95% of it, being a derivative means it's GPL whether I technically own it or not.
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Re:OPEN SOURCE (Score:4, Insightful)
being a derivative means it's GPL whether I technically own it or not.
No, it's not. You can freely combine GPL and proprietary code as long as you do not distribute the software. So the university can always choose to rewrite that 5% and license the code under whatever license they choose. If you release the software illegally, to try and bind the university to the GPL obligation to provide the source, you are guilty of illegal distribution of copyrighted material and the university is under no obligation to honor the GPL. In that case you could be sued by the university for illegal distribution of copyrighted material and by the people you gave the software to, for failing to uphold the GPL license (since you do not have the right to distribute the source, as you are obliged to). If they find this post of yours or similar statements made by you, they can also sue you for fraud, since you effectively tried to make them give their rights away, by using deception.
It is an interesting case what happens when you use deceptive practices to make the university release the software with GPL components. In many ways, it's like slipping drugs into the bag of a traveler without them knowing. They are completely innocent of any willful crime, but in practice courts tend to sentence them hashly, even when their arguments are reasonable, unless there is a confession by the person who planted the drugs (or other hard evidence). However, courts tend to be far more lenient to organisations than to individuals, so they can probably get out of trouble by simply no longer distributing the software.
PS. IANAL, so this could all be wrong ;)
PS2. By trying to abuse the GPL to violate the law, you are not doing the Free Software movement any favors. If someone tries to follow your scheme, gets into a conflict with the organization they work for and the resulting mess gets highly publicized, organizations will start equating the GPL with loss of IP, theft and fraud. Is that what you want?
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Seriously? (Score:5, Insightful)
If you produce it in your free time and it isn't related to your work, then the company is unfairly trying to take your work.
If you are simply doing what they ask you to you are doing your job.
The question here is, did the University get the grant or did you? Would you have been able to get the grant if you weren't at the university because of the credentials of the institution? Were you hired as a research associate into an existing area that is managed by someone else?
If so, put your ego aside and accept that you are growing as a professional.
Now if you have the credo to be a principal researcher then find an institution that will provide you the room you want to have more ownership of your IP.
Too often we think we are the only ones who can do what we do when in reality there are many talented developers out there.
We have to accept as a profession that we are driven by business needs at some point.
Re:Seriously? (Score:5, Insightful)
Actually, it's rather different for university researchers, such as the original poster. We are employed to research. If we are in computing, then part of that research might involve writing some code, but many of us are not simply employed "to produce software". (Though some are.) As academics, there is a much greater expectation of being able to continue our research at another institution (universities are not in product competition, but are expected to cooperate -- it's mostly public funding after all). A history researcher can reasonably expect to continue his history research if he moves post or goes on sabbatical. As can a social scientist. For a computing researcher (or for microbiologists), however, the IP of the written code becomes a complicating factor. If one university claims copyright, but the only researcher involved moves to another university, it could completely stymie any research progress. So, for instance, Cambridge University does not usually claim copyright over software its researchers produce -- this isn't so much a matter of commercialisation rights as of academic freedom. It's no wonder then that the GPL, BSD licence, and Creative Commons all came out of university environments, not the commercial sector.
Something the original poster has not mentioned is why this decision "must be made soon". Is it because he is signing a new contract (it would be unusual for an employment contract with a university to claim ownership of code predating the contract), or because he's at loggerheads with the IP department?
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Normal (Score:5, Informative)
Re:Normal (Score:5, Informative)
Just to add to that: NSERC specifically allows for universities to retain copyright of materials produced under NSERC grants. So yeah, if you take their money, the university can take your rights.
Even more than that, if the guy did any of his work under direct supervision of a faculty member or staff, the very fact that the supervisor was paid by the university while contributing time towards the project, allows the university to also claim at least part of the ownership.
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You are allowed, they are allowed (Score:4, Interesting)
> Are they allowed to completely strip my rights to the software?
Um, they are allowed to ask for anything they want (that is not illegal) in a contract, and you are allowed to either sign it or not. If you are paid by them and write the software on their time and sign a contract saying they own it, you don't HAVE any rights for them to "strip".
You are also allowed to negotiate, although I wouldn't hold my breath...
don't do it (Score:5, Informative)
Yes they can take away all your rights to the software, but no you shouldn't allow them to do it.
First, I've been a grad student at one university and a professor at another, and I've always avoided signing these agreements. It turns out that if you just avoid signing them and aren't too confrontational about it, you can easily slip through the cracks.
Second, you should talk to your professors and see if they will allow you to develop software publicly under some irrevocable license like the GPL or BSD. With revision control software like git, it's pretty easy just to throw the repository on your home page and make everything you do available to the world (including yourself) on a royalty-free basis. Import some GPL-ed third-party code into your project for extra protection.
Finally, sometimes professors do try to exploit grad students for the purposes of launching their startup companies, etc. If you feel that you are going to be in a position where your research is compromised (for instance because your results are no longer reproducible by the community), then you should find another research group to work with!
Re:don't do it (Score:5, Informative)
Similarly, you'd better expect that the professor will go find another research assistant to work with.
I'm a professor, though not at a research institution. Here's what I would do if I were and hiring research assistants as bitchy as the poster...
"Want to be my research assistant? Then sign this. Yes, your work becomes my property." "Oh, don't like that? Why don't you go find another professor who is hemorrhaging grant money."
Seriously, why would I need, let alone want, to deal with some FNG with very little experience,
full of himself, fantasizing that he's got the next killer break-through rattling around his excuse for a brain pan?...
Well, I'm a professor at a research university, where most Ph.D. students are RAs (except while they TA or have outside fellowships). Several of my Ph.D. students have gone on to be professors at top-ranked universities, so I'm probably at least an okay advisor. So let me tell you that advising Ph.D. students is all about respecting them and their ideas and opinions. It's also about trying to instill good taste and values in students. I am shocked to see someone who claims to be professor have so much contempt for his or her students.
As for licensing software, I always explain to my students that they should make their projects free software to have the most impact. I discuss the options with my students, but generally let the lead student on a project select the particular license, ideally with rough consensus of all involved. So yes, even though the university might own their work, my students are free to continue using it and building on it in perpetuity.
It would be wrong for me to confiscate students' intellectual property--particularly if I tried to make them sign something saying their work belonged to me, as opposed to the university. Moreover, it would be setting a terrible example and instilling bad values in students. Finally, it would probably be illegal, because the university has policies in place to prevent the abuse of students.
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Legal services (Score:5, Informative)
Yep. they can. (Score:4, Interesting)
As a research student you are "hired" by the university. End of discussion. Your tuition and stipend are paid to you from research grant money that is owned by the university/professor.
Faculty members at some universities may retain their intellectual property rights. This is because there is a separate contract negotiation that takes place between faculty and universities. You [the student] are not part of this agreement.
At every PhD institution I know of, Teaching Assistants and Research Assistants are employees. In fact, third-rate employees. You get no health benefits, you get no retirement benefits and you get no intellectual property benefits. Basically, you get no benefit other than an effective scholarship.
You're screwed. They own your software. It is black and white.
Some basic guidelines... (Score:5, Informative)
Of course, this is slashdot, and IANAL. But having a little experience, this is my take on things:
If your creative duties were supervised by the University - that is, they told you what program to write, and how to write it, and your duties included writing code - your chances of winning a court case in your favor are very small.
Teachers and professors are in a different category because, generally speaking, they are not producing a "work for hire" - but are instead hired for their role as a teacher or lecturer. The University does not retain creative control over their work; does not proscribe what is produced; and does not require them to produce code as part of their duties. That is, the code is incidental to their work. Thus, they can often retain copyright of the code they produce.
From your description, this does not sound like the case at all. Instead, from your terse description, I, and a court, could reasonably conclude that you were hired to write code (among other duties), and hence, your employer owns the rights to it.
Unless you have a well-documented case to the contrary, it would be safest to assume your University's legal department is correct.
What "SOFTWARE RIGHTS"?!? (Score:4, Funny)
Do you believe in imaginary property or something? Information wants to be free, you know... New York County Lawyer will be helping your University (or whoever else gets a hold of your code) to dodge any and all legal challenges you may pursue — you wouldn't even know, who they are, because the University will bravely refuse your subpoenas against John (and Jane) Does.
whee (Score:5, Funny)
* Dissy puts on the lawyers hat
As your attorney, I advise you to rent a very fast car with no top. And you'll need the cocaine. Tape recorder for special music. Acapulco shirts. Get the hell out of L.A. for at least 48 hours.
* Dissy takes off the lawyer hat
* Dissy puts on his robe and wizards hat
Er wait...
Having just gone through the NSERC process (Score:4, Insightful)
If you are a graduate with a typical NSERC then you are entitled to the rights of your software. However, the University can publish and distribute the software (not usually code) as they see fit. If you have another funding source (internal? dept? faculty? provincial?) then you may loose the right but not because of nserc. Some jokers say get a lawyer etc.... ya right easier said than done considering you are likely a poor sap. You are better off contacting your student union and getting your graduate student association involved. Get someone with a big mouth that will threaten to go on TV about it. Also go to the heads of department and talk about it. What does your supervisor say? Are you in a lab? It is odd that you post this in the end of the first semester if you were undergrad so I'd say you are graduate. Good luck.
Have you read the employment agreement? (Score:4, Insightful)
You must have signed something when you started the job... either for the University or for the company/agency you're working for that is under contract to the university. You should read it... as it's quite likely binding. If it states that they own the rights to whatever you produce while employed by them... it's _quite_ likely to hold up should it come to that.
This is somewhat like asking "Can I tell my wife to take a hike and give her nothing?" after you've been married for 45 years. The answer is more than likely "no." You should have known what you were getting into at the outset... after doing all the work subject to an employment contract isn't the best time to ask what your rights are or try to negotiate or open-source something. You can ask, but if they say no, that's pretty much the end of it. Unless you decide to say "screw it" and then steal or open-source the code... which could open you to criminal and civil liabilities.
Silly (Score:4, Insightful)
Can anyone name any other occupation where people have such an exaggerated feeling of ownership over what they produce?
Even if you think you own this software, if it's a good idea, people will copy it, or steal the design, and never pay you a dime.
Do it. Do a great job. When the time is right, move on to the next great thing.
C A N A D A , eh? (Score:5, Informative)
Canadian law is very different from US, particularly around work-for-hire and you really need to talk with a local legal-aid office or lawyer.
It ought to be public domain (Score:4, Insightful)
I paid for that code you wrote it should actually belong to
the public not you or the university.
It's Called The Wolfram Clause (Score:5, Informative)
Wolfram, however, had other ideas.
There was a protracted, expensive legal battle, in which Wolfram argued that -- despite the overt cultural backdrop of sharing knowledge -- since he didn't expressly sign his rights away, it was all his, and Caltech could go pound salt. It ended up with Wolfram resigning from the physics department and taking all his intellectual "property" rights with him.
And that's why, to this day, it costs $2500 to buy a copy of Mathematica. And also why that clause is in your contract with the University.
Schwab
It doesn't matter who "owns" the source. (Score:5, Insightful)
Something that worked well for me in similar situations was this:
Request that the software is released under an open license (in my case, the BSD license), a request that an academic organisation is unlikely to refuse. There is no need to actually give anyone else a copy of the source. When you leave the university, you have full rights as bestowed by the license even if the copyright on the source belongs to "Regents of the University of California", or whoever. Problem solved.
Having said that, if your software is anything like typical academic software (my own included) then the source code will be dreadful and worth next to nothing. It is the ideas encoded in the code that are valuable - and the ownership of those is a whole other argument.
Don't give anything away (Score:4, Interesting)
work for hire (Score:4, Insightful)
Why are so many /. readers so frightened of work-for-hire arrangements? Copyright is not a birthright. You do not automatically own the rights to things you create.
You are quite right to recognize and debate the issue. But you start from a point of assuming you should retain those rights. Welcome to employment. Usually, you don't retain the rights to things you're paid to create. That the rules are different for professors is irrelevant.
You have the basic equation right -- the deal is what you agree to -- but you seem to be overlooking WHY people are paid to create software. People pay you to create software because (by doing so) the value accrues to them.
Work-for-hire is neither bad nor unfair.
It's called "Work for hire" (Score:5, Insightful)
Try actually reading the law instead of asking a biased bunch of people on a web site. And, if you don't like the conditions, don't take the position.
Re:Why? (Score:5, Insightful)
Two things:
First: Lawyers are expensive. Very expensive. Most working people can't afford them very well, much less research assistants or students.
Second: The average city isn't exactly crawling with competent Intellectual Property lawyers. I would say the typical lawyer would say "huh" and maybe get you some boilerplate legal templates to use, and not really help you much beyond that.
I say stand your ground if you have agreed to nothing so far. Losing you completely gains nothing for them, they will cave in. I've never found it hard to allow organizations or institutions to allow me to keep rights to my software, as long as they get to use it.
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Re:Par for the Course (Score:4, Insightful)
Universities are non-profits
You seriously believe that? They only get taxed like that but for some reason they make a lot of "Excess-Revenue". Which will go to a new football field or a building. Then they will still think that after paying 30k in tuition that you owe them and you should donate money to them.
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No, this is a fine place to start (Score:5, Insightful)
These are all very good questions, but you should not be asking Slashdot, you should be asking your attorney. Not having one is no excuse. For something like this, with the ramifications being as big (and permanent) as they are, you need to get one.
He should get an attorney, but there's nothing wrong with asking Slashdot first. A good lawyer will happily charge you $250 an hour or more to teach you about very basic stuff, but that's a waste of money and time.
If somebody's charging you $4 a minute, it makes sense go in prepared. And how do you get prepared? Reading about the fundamentals, getting advice from people with similar experiences, making lists of questions to ask, figuring out what to tell the lawyer, and talking about your concerns with peers. And where can he do all of that? Right here. And as a bonus, a bunch of people who will be able to use the knowledge one day will get it for free.
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Re:No, this is a fine place to start (Score:4, Insightful)
From experience, slashdot is the perfect place to get misinformation on legal matters.
Haven't read through all the comments yet, but I wouldn't be surprised if the misinformation here costs him more time with his lawyer by having his lawyer untangle all the misinformation mess he's received here.
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Re:No, this is a fine place to start (Score:4, Insightful)
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