Losing My Software Rights? 440
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?"
OPEN SOURCE (Score:3, Informative)
Re:OPEN SOURCE (Score:3, Informative)
You do realize that if you don't own the rights because you signed them over to the university, you can't open source it, right?
Better to ask forgiveness (Score:1, Informative)
First off, I am not a lawyer.
Second if you haven't signed a contract that gives your intellectual property / inventions / authorship / works to the University then you own it, plain and simple. You as an individual have to willingly and explicitly relinquish your rights, they can't just take them.
Meanwhile just release whatever you want to the public under whatever license you want. If they complain, do what everyone else does and sarcastically feign ignorance and say "well, we never agreed to that".
Sad to say it, but welcome to the real world. Software engineers who contribute to open source have to deal with this sort of stuff very frequently because corporations typically have a blanket "inventions" contract that one must sign to work there - even the good ones - and yes it does suck.
Cheers
-b
Normal (Score:5, Informative)
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!
Legal services (Score:5, Informative)
That's irrelevant (Score:3, Informative)
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.
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.
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.
IAAL; get a lawyer. (Score:2, Informative)
Get a lawyer. I AM a lawyer, and as such, I can confidently say that only a lawyer is qualified to answer your question. At that, not just any lawyer: either one who has dealt with similar issues before, or one who can and will devote the time to read your employment contract (and other relevant documents) and research the statutes and regulations (and possibly case law) pertinent to your issue.
Since you're a student (and thus, probably poor), your best bets are your local Bar chapter and your local law school copyright professor. Local Bar organizations tend to have a program in which the Bar matches up potential clients with willing attorneys. You might get lucky and find someone (competent - make sure they have a more than passing familiarity with the Copyright Code) who is willing to work for you on the cheap. Alternatively, you might get lucky and find a law professor who finds your question interesting.
If you can't find a lawyer who will spend the time to answer your question, you'll want to read the law, i.e. the Copyright Code, 17 United States Code. Start with sections 101 and 201, definitions and ownership, respectively. But your question also requires an understanding of whether you are an employee, whose employee you are, the law and regulations surrounding your grant, the university's own policies, your "employment" contract, and whatever contractual papers relate to your grant (whether signed by you or the university). We, the Slashdot polity, CAN NOT make an informed decision regarding your question, because we do not have access to several of these sets of documents. Get a lawyer, or be prepared to guess. You are not qualified to read your contract because lawyers use words you know to mean things that you (1) do not expect and (2) would be unlikely to understand without some education in the law.
If you ARE the university's employee, and none of the related contracts, laws, regulations, etc., supercede copyright law on this question, then the university's lawyers are probably right. But please don't take my word for it, or the word of anyone else on this forum. Get a lawyer!
Re:Better to ask forgiveness (Score:2, Informative)
You are wrong about this. In most states in the United States,
Copyright is a matter of federal law and federal jurisdiction, not state law.
"Copyright" is based on one of the specific powers reserved by the constitution for the federal government.
It's not just some states in the US, it's all states in the US.
If an employer hires you to create a work in exchange for something of value, you complete the work, and receive the thing of value, then the employer is legally considered the author.
The relevant law is the US Copyright act of 1976. Specifically, one way a work can be considered a work for hire, is if it is:
a work prepared by an employee within the scope of his or her employment.
Unless you are not an employee, the work wasn't prepared at the time of employment, was outside the scope (I.E. not of or part of a work you were employed to create), then by default, the employer owns it, absent an explicit written agreement to the contrary.
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.
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.
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
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.
Joint Venture Agreement (Score:2, Informative)
If this SW has commercial potential, then enter into a joint participation(Joint Venture or JV Agreement) agreement with the University(U) so that each get 50% of the commercial revenue. This might entail the U making a deal with a SW corp in that area and you providing source and notes to allow them to maintain the product. Usually the home College will get a site licence, and the SW corp will want to sell the product to industry and might give site licences to other colleges to breed a bunch of users who will create industrial demand. As for release as a free product under a BSD that would probably reduce the apparent value of the product to the SW corp, so take that into account. The legal dept at the U will be under a broad mandate to profit the U and not you, so they may give you biased advice. One way, as said by others, is to get a law prof to get some of his students to take it on as a project, for free, as a training exercise if you cannot really afford a lawyer on your meager stipend
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.
Re:Not always. (Score:3, Informative)
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.
I'm pretty sure that's completely untrue.
See, e.g., the Bayh-Dole Act [wikipedia.org]. There was also a recent hearing in the House aimed at overturning the NIH's open-access stipulation for publications. Just because something is publicly funded does not mean that it is freely and publicly accessible by any stretch of the imagination, regardless of how much that should be the case.
But maybe I'm completely misunderstanding things...
Contracts are negotiable (Score:2, Informative)
There's no get outs, or wiggles there.
However, you may well find that to be negotiable - it's often a standard term in a contract, as a 'catch all' for 'anything you make as part of your job, is ours'. It's far easier to put that in the contract on day one, than to have to fight in court.
I had a similar term in mine at a previous employer - I was being hired to sysadmin, and there was a term covering intellectual property of stuff produced.
Turns out they didn't actually care that much, because my job _wasn't_ to produce code, and so we agreed to delete that from my contract, and replace it with... well, I can't remember the exact wording, but approximately anything I was specifically asked to write by my employer (and thus was paid for) was theirs, and anything derivative I could release provided I didn't profit from it. Or something like that, anyway. But as my interest was being able to post snippets on websites, and occasionally publish the odd test script, or maybe work on GPL software, that was fine.
is it something you can commercialize? (Score:1, Informative)
if the answer is yes, go back to the legal department, tell them you want to sell it, and negotiate royalties. the university isn't going to go out and sell it on it's own. universities don't do that sort of thing. they do like other people to do the legwork for them, and to get a cut of the revenues. i'm actually going through exactly this situation right now with my own business, and the best leg up you'll have in these situations is how much development you do on the software outside the university, either on your own time or after leaving your job. improving the software reduces their ownership interest.
if the answer is no, go back to the legal department and ask what sort of open source license they'd find agreeable. if you aren't going to profit from it, the university isn't, either. might as well try to share it with the world.
Re:Legal services (Score:1, Informative)
Most graduate student associations will also supply access to legal advice. This may be handy.
Also consider your institution. At Waterloo, as I understand it, creators own their own IP. Other universities have different policies. If you are working for someone else on a grant then it is likely different again... These are valid questions to ask your advisor and a lawyer.
Good luck.
MOST CERTAINLY NOT (Score:2, Informative)
The researcher is employed to do a specific job. The results of that job belong to the employer, and nothing else. If a company pays you to write a piece of code, or engage in some kind of development, they usually have a bunch of dudes in suits and the god aweful ms-project tracking that everything you do is germain to the task at hand. If you engage in ancillary work that you might think might be helpful, but is not on the plan, you get the shaft.
To bring us back to a higher level. You pay a cleaner to clean your bathroom. If you aren't paying him to clean your garage, you don't the obligation for him or her to do so. If you pay a scientist to go and cure cancer, and, on his own time and dime, that scientist cures aids, so long as the scientist is delivering research per the project plan that you have set out for the cancer, and uses his own time and resources to cure aids, then you don't get that research.
Employment pays for jobs to get done and is not indentured servitude.
Not grey at all... (Score:2, Informative)
It's work for hire. By ordinary copyright law it's not yours. It's your employer's, unless you negotiate other arrangements. If you're working on the software for money it pretty clearly isn't yours any more than if you design and build a car at a factory. The manufacturer would probably object if you started driving cars off the lot or sold the engineering designs to other companies, right?
The only details that will matter is who you are negotiating with for better terms: the researcher, the university, someone else (e.g., granting agency), or all three. More than likely, it's the researcher, depending upon the contract they have with the university. You *must* find out what that arrangement is. That arrangement sometimes includes automatic perpetual licensing agreements with the university or sharing of royalties for patented inventions, and a variety of other complications even if the researcher "owns the IP" in a general sense. Generally, commercial == greater complication. It depends upon the university. Fortunately, NSERC isn't an issue. They don't lay claim to work done with the research funds.
Most researchers are going to be open to alternatives and will try to facilitate them for students, as long as they get to continue using the software they've paid to have developed. As other's have suggested, getting an agreement to a GPL, BSD, or similar license might be a way to ensure you can continue to do what you want with the code after your work finishes. But you've got to make sure that a researcher has the ability to allow that kind of licensing via their arrangement with the university.
Whatever you do, don't start the negotiations with an indignant attitude about the situation. Get this clear in your head: the rights you say have been stripped you probably did not have in the first place, if you were being paid for the job. You were operating with a misconception if you thought otherwise.
I looked around, and found this bit of information from McMaster University [mcmaster.ca] that might help. It describes a number of situations that can apply at a university (e.g., the difference between work for hire and work that students do in courses). It is likely there are many differences across the country, but it should give you some ideas about the usual situation.
Welcome to the harsh world of gainful employment, young researcher!
Re:Not always. (Score:3, Informative)
Let me clarify this a little for you:
NSERC in Canada is the "National Science and Engineering Research Council".
Basically, they fund professors and students to foster research work and the like and improve the overall state of the art. They do not claim ownership of the work you do under that funding -- I myself worked in university for a prof who had an NSERC grant. I was paid out of his budget, and while he might have had some measure of accountability to them, they didn't really dictate terms to him or demand that they get the research work as their own.
The university does NOT own the work that professors and students do under an NSERC grant. A professor who published papers or creates software (etc) under this program is the owner, NSERC is the funding agency. The University is just the place where the work was done -- it's my understanding that unless the professor signed something that says the university owns it all (and, no prof would) that they have no claim to it. The professor is motivated to research and publish for his own ends and if he moves on, carries his research work with him.
In short, based on my experience with NSERC, the university has no claim if he is being funded under NSERC and working with a professor who retains rights to his own works.
Unless things have changed (and, granted, university was a long time ago) there is nothing in an NSERC funding that stipulates that the research is the property of the funding agency.
Cheers
Re:Not always. (Score:3, Informative)
Sometimes it does, and sometimes it doesn't.
Consider what the "B" in BSD stands for. And BSD-derived OSs are almost the most liberally licensed software in the universe. U Cal Berkeley retains copyright on most of it, and yet haven't commercialized it to any significant extent that I can see.
Re:Not always. (Score:3, Informative)
Re:Do what the rest of us scientists do, publish (Score:3, Informative)
Take a look at the recent Forbes magazine. They did a story on "regular" families (all of whom make in the neighborhood of $250,000 - $500,000 a year or more - very not "regular" frankly) hit by the economic crisis.
In that article there is a chart of who pays what portion of the tax burden. The largest group, who pays a healthy 11-13% (can't remember the specifics) are people making around or below $50,000 a year.
The group paying the largest portion of the taxes (and the most as a percentage of their income) is those guys in the 250K - 500K range. Now, that's a problem I'd like to have - just to get that out of the way.
Next up is the millionaires, the guys making multiple millions a year - they are paying a smaller share of the tax burden than the guys making only a quarter of a million, and are paying a smaller amount as a percentage of both what they make, and how much wealth they control.
That is an unfair system - mostly unfair to the knuckle heads in the 250K-500K range, who are paying for the millionaires' Bentleys and 13th houses.
Why knuckleheads? Because those same guys love to talk about wealthfare moms and public school kids, and how unfair it is that they have to pay for all those "social programs". Cry me a river.
Maybe those knuckleheads should be pisses to hell, that the millionaires - the guys getting the most benefit out of a society that they 250K crowd are mostly paying for - that they don't pay their fair share, and leave the struggling alone, or maybe even, help them out.
To finally answer the question about what tax system doesn't "hurt us" - one that taxes the very wealthy and helps get our public services paid for, to stop them from crumbling - making things like public schools work, a college system that educates, and bridges that don't fall down. FDR style taxes on only the rich, and some relief for the rest of us - economic enabling relief for the people who have a desire - a need - to innovate and get stuff done, but who currently lack the resources to do any of it.
How's that for a tax system that doesn't hurt _us_.
Experience from one University Prof (Score:3, Informative)
1. The status of work at a university is very weird, and it's hard to find two people who understand it the same way. The law's concept of work for hire seems clear, but universities accept the notion that they haven't hired all of your work, not even all that you perform during normal working hours (which are never normal at the U). I heard very high administrators say that faculty are faculty all the time, 24x365.25. But we also pretend that our salary only covers 9 months, and we are allowed to take summer jobs in which we make contracts providing our work to other institutions. Point: it's totally unclear.
2. Almost all work under a US government grant is done as a university employee. The feds grant the money to the university. Under the terms of the grant, a principal investigator (PI) has wide authority to tell the university how to spend the money (and almost no accountability for doing it wrong---universities get dinged for statistical estimates of the amount of mistakes made by PIs). Anyone working on the grant is a university employee, paid from "restricted funds."
3. The feds have never to my knowledge claimed ownership of work performed under research grants. In the past, they have explicitly encouraged universities and other corporations to own and exploit patents and copyrights obtained with grant funds. There is a trend toward requiring open sharing of some grant results, but I haven't studied this. It may only apply to data so far, and it probably varies between funding agencies.
4. Universities have good grounds for claiming that work done with their money (a very ambiguous category, as I mentioned in #1) is work for hire, patents and copyrights due to them. They routinely give back the copyrights to creators, on the excuse that these copyrights have to do with publication of research. That's often true, but it is also applied to rather cynically produced textbooks, that appear to be written mainly for plunder (which very few of them actually capture).
5. Universities have a mission to publish research, and they get financially valuable prestige from research associated with them. They tend to avoid obstacles on research publication. I recommend associating software as closely as possible with research articles and reports. Maybe the source code is an appendix. Maybe the journal won't print it, but they'll give the URL reference. Years ago, I think I established a policy that my U would never stand in the way of software being released to the public (GPL, BSD, implicit full license---incorrectly referred to as "public domain"). I don't think this policy was ever violated, I don't think it ever will be, but a lot of people don't have confidence in it.
6. Toothpaste comes out of tubes more easily than it goes back in. Anything posted on SourceForge, released with an explicit statement of GPL or other irrevocable open license, is unlikely to be closed down successfully in the future, especially by an organization as clumsy and partly benign as a university.
Gotta go to class. I'll add observations as a self-reply later. I'm not very interested in arguing any of this---just sharing my experience.