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?"
Negotiate. (Score:5, Insightful)
Whatever you do (Score:4, Insightful)
get it in writing.
Guess what... (Score:4, Insightful)
Talk to a fucking lawyer.
Or back down.
Coming here is already a wrong move (Score:3, Insightful)
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.
Not always. (Score:1, Insightful)
Contracts can't violate laws, so you can't sign away your rights. They can't, for example, appropriate code you've written before and other people's code you happen to use.
That being said, Look Out! Don't sign anything you don't agree with if you can avoid it. What you have not signed can't be held against you. Talk to a real lawyer, not the mickey mouse guy representing the University against you.
Why? (Score:2, Insightful)
Why do people as Slashdot these questions... GET A LAWYER!
Re:Why? (Score:3, Insightful)
It's a kind of trolling. Ask a hot-button issue on slashdot to make waves. Don't know what's the pleasure, the 15 minute of Internet fame?
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.
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.
Re:Coming here is already a wrong move (Score:2, Insightful)
He talked to one who works for his university. The lawyer told him the answer he didn't want to hear. He's coming to Slashdot for a pity party.
Re:Guess what... (Score:5, Insightful)
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?
Re:Coming here is already a wrong move (Score:3, Insightful)
Of course, the lawyer doesn't work for his best interest, the lawyer works for the colleges best interest, they are paying him. And come on, the GP, telling a COLLEGE STUDENT to go talk to a lawyer.... How can they afford one? Maybe if their school has a legal department, they can have some students or faculty help them out..
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.
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.
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.
A contract is a contract (Score:2, Insightful)
You can sign or not sign anything. If you don't like what it says then don't sign it.
Even if it turns out to be unenforceable it would still be your burden to convince a judge of that if they decide to sue you.
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.
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.
Comment removed (Score:5, Insightful)
Re:attorney - and you're probably wrong. Fail. (Score:2, Insightful)
Re:Seriously? (Score:2, Insightful)
Re:Guess what... (Score:3, Insightful)
Some people want more means than is provided by a fryalator.
A major injustice today is the requirement for professional legal help, at great personal expense to the individual, for every-day legal interactions. This means that while the individual might have rights on paper if they don't have the money to enforce those rights through legal recourse then they don't have those rights in effect.
Up to the University's policy (Score:3, Insightful)
NSERC's web USRA web page says:
Who owns the rights to intellectual property from research?
NSERC does not retain or claim any ownership of, or exploitation rights to, the intellectual property resulting from your NSERC funding. However, since NSERC's role includes promoting the use of knowledge to build a strong national economy and improving the quality of life of Canadians, every effort should be made to have the results of NSERC-funded research exploited in Canada, for the benefit of Canadians. You are encouraged to discuss intellectual property rights with all parties and organizations involved in the research.
My read: if the University decides to keep the IP, they can. In fact elsewhere, the Industrial USRA documentation explicitly gives the employing company the IP.
From what you said, I understand that your University's policy depends on if you were acting as an employee or as a student. So, what were you? Did they/will they pay you as a T4 (withheld tax) or a T4A (no withholding). If they payed you with a T4A, they were claiming you were a student, not an employee.
fwiw, I hire my USRAs as T4A
Work for Hire?? (Score:3, Insightful)
IANAL but I've certainly paid a lot of money to a few of them so I have some experience in this area. You don't say explicitly but I'm going to assume you are in the USA.
Unless you have an explicit contract that states who owns the rights to any code you produce than the whole issue comes down to a determination as to whether the effort falls under "Work for Hire". By default the author owns all copy rights to any work produced. The exception (when there is not an explicit contract for rights in place), in the USA, occurs when a) you are a W-2 employee (1099 and contractors don't count) and b) the work falls directly under the efforts that you are being paid as part of your employment.
The odds are, if you were being paid as an employee under a W-2 where the employer withholds taxes, that your efforts are considered a work for hire since it appears that the code in question was developed to support the research that is the purpose of your employment.
If you are not a W2 employee (doesn't matter if its the Uni or another agency paying you - its the W2 that counts as another agency owning the rights probably assigns them to the Uni as part of their contract) then you own the rights unless there is a contract with you that states otherwise.
Now - you may find yourself rapidly unemployed (as I have been) once you point this fact out to the Uni who will then make continuation of your relationship with them dependent on you signing away said rights. In my case it was actually explicitly excluded from my employment when I signed on because it was based on my prior work so I declined to sign away my rights. You may not be in a position to do so...
Good luck.
it's probably not yours (Score:2, Insightful)
IANAL, but IAALS
Here it sounds like you are the employee, and the University is your employer. (You are not a faculty member; they have different rights to their work product.)
You said you 'weren't hired directly'... I doubt this means what you hope. I'd guess that the NESRC paid the University, who in turn paid you. Look at your checks: if they are issued by the University, you're their employee.
It sounds as if you've been working on University grounds, using University equipment and resources, and getting paid by the University to write software, and you've finished the task. Writing the software was your main duty as an employee.
From what you've said, I believe you will NOT be able to properly claim IP rights to this software.
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?
And consult a lawyer (Score:2, Insightful)
....But that's just me, and this is Slashdot.
Re:Normal (Score:2, Insightful)
Something fishy here. NSERC is public money, right? From the taxpayers of Canada, eh?
So let me get this straight. This guy is getting money from the public, and he wants to keep the rights? They belong to the people of Canada, who provided the money.
Who's trying to steal who's IP rights here? The IP from public money ought to be public.
Let me ask you this... (Score:2, Insightful)
Would you have written that software without being employed in your current situation? Have you used University software? Have you gotten help from professors and other students?
My point is this: Often students think that they have done something completely by themselves, but the university is paying you and providing you with a creative environment to develop. Most companies will not do that... and they will still take your software you write at home on their laptop.
Re:Guess what... (Score:4, Insightful)
$350 spent now may save many many thousands later ...
Good Questions, Bad Timing (Score:3, Insightful)
Your rights and the licensing options of the software you write are valid concerns. However, these concerns should be addressed before you write even a single line of code. It's just a bad strategy to write the code and then try to sort out who it belongs to.
I realize this doesn't help the current situation, but that situation may or may not be salvageable. It's a better plan to go forward resolving to solidify your stance and awareness of who your work belongs to before you do the work.
I think The Simpsons episode covered this when the kids collectively bought Radioactive Man.
What value do you place on your rights? (Score:2, Insightful)
Re:Normal (Score:3, Insightful)
The dispute is between him and the university, not him and "the public". If the university gets the rights to the software, that doesn't necessarily mean that it will benefit the public anymore than if he does. Maybe the university will sell it to a propietary software house. Maybe it will sit on it and nobody will be able to use it other than the original users at the university. Maybe if he gets the rights the developer will open source it.
If funding agencies like NSERC want recipients of their funding to make software and other results of research generally available, they most likely will require that the software be made available under a free license or public domain rather than assigning it to the university as owner.
What NSERC's role is here is unclear, but there's no reason to think that the developer is trying to cheat NSERC or the public.
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.
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?
Re:No, this is a fine place to start (Score:3, Insightful)
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.
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?
Re:Negotiate. (Score:2, Insightful)
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.
Re:No, this is a fine place to start (Score:4, Insightful)
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.
There are some nuances here... (Score:3, Insightful)
I think the first post states the case pretty clearly regarding negotiation - but inherent within that point there are some things to consider:
FIrst off, do you have significant leverage to negotiate? if you back out, how hard would it be for them to replace you and get what they want? Would it set the project back? If you are easily replaceable, then you don't have a lot of leverage to negotiate...
Also, how would leaving the project affect you in other ways? Would you lose valuable experience and contacts? would it make it difficult or impossible for you to do other work for this institution or others (EG would it give you a reputation as being difficult to work with)?
There are more things to consider than there appear to be on the surface.
Also, do you think that if you did do this work and didn't have the rights to it, could it really affect you down the road practically, or is it more of "I don't want to sign rights to my work away because it's my work and that's not right." (which I can totally empathize with, but which you may want to reconsider).....
Finally, is there anybody there who you cabn approach and discuss your concerns with? Maybe you can get rights to use the parts of your work that don't directly compete with or infringe on the compelted project and could get an agreement like that.
Re:Do what the rest of us scientists do, publish (Score:4, Insightful)
Know the Code (Score:1, Insightful)
IDEAs
1. Setup a LLC and subcontract to the University. That way you get paid with the grant money the school receives.
2. You could also write a password protected subroutine into the code that will deactivate the code unless unlocked by a "paid" password hmmm? (Scraching my head...)
3. Only write the code to meet minimum capability requirements until the project ends, then form a LLC rewrite the code with substantial improvements based on your true skillset abilities and market the software.
4. Do not accept the position and write the code before the University can publish the software.
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:attorney - and you're probably wrong. Fail. (Score:3, Insightful)
I've learned that keeping any rights to commercially developed software is unlikely unless you have some kind of weight in the business community.
If you're being paid to develop that software, then that seems fair enough to me.
The trouble is when employers go beyond that. In employment relationships, and only IME of course, a lot of employers' lawyers default to inserting clauses into the employment contract that say the company owns everything you do. Often, there is nothing limiting this to things you do as part of your job, so it includes the blockbuster movie script and novel you wrote in your spare time as well, and certainly programming-related things like any work you'd like to contribute to an OSS project. Obviously this covers the employer unambiguously in the event of any dispute, but screws the employee.
The interesting thing is that, again IME, many employers will accept that this isn't a fair deal and will be willing to adjust the wording to something more balanced, if you challenge the deal before signing. A few won't change their standard contract, but there is such a strong correlation between those I would/wouldn't be comfortable working for and those who are/aren't willing to make such a change that this is now one of my two "acid tests" when interviewing for a programming job. (The other, if anyone is curious, is whether they are willing to show me their code and that code looks respectable. Again, places that decline to do this or where the existing code quality is poor tend to have other weaknesses as well.)
But in any case, that may or may not apply here, and I strongly agree with those who say that if this is in doubt and may become relevant then the OP should get a real lawyer to look at the exact contract being offerred.
Re:Guess what... (Score:2, Insightful)
When I was in grad school at a US university, there was a lawyer available for free consultations with students. His campus visits were funded through the "student activities fee" we all had to pay each semester. I used the service once to get advice about a dispute I was having with my landlord.
I don't know if this is a common arrangement, but it's worth checking out.
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...
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.