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?"
Perhaps... perhaps not... (Score:3, Interesting)
Well, it's all pretty black and white there... is the university paying you? Does the check say "Harvard University" or does it say "HRUMPTHING Project, LLC?"
I mean it's not like your playing football where you win a T-Shirt and the university takes home 100's of millions in TV revenue! You can speak to your employer about what you want out of the deal and see if there's any possibility.
But just like football - chances are you're going to get squat for this - and hope for glorious rewards in the after-life (aka.. the real world).
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...
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.
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.
Re:Normal (Score:1, Interesting)
How can this guy be an RA if he can't even research this basic information? Good luck in school buddy!
At the top of my head (Score:3, Interesting)
Never trust the legal advice from counsel representing the opposite side. You should probably consult your *own* IP lawyer. If you haven't signed anything yet, you might still have some negotiation leverage (supposedly).
Also, if the only right you want to keep is the right to keep working on your own software (after that research is over), try to find a lawyer who is for open source, and see if open source could still get you that grant money -- but protect you -- if for some reason -- the University decided to take that entire project away from you. Open source is a great protection mechanism for core developers. I know it was for me (when I was working for a private company). The worst part might be that you lose the name of your project, but if that happens and even if you relaunch a rival project elsewhere, all the community and all the potential clients will simply follow whoever the original developers were to the new project.
That being said, do consult a lawyer to make him look at your specific situation. And talk to the actual faculty sponsoring the research, if they're high enough on the totem pole, they might be able to successfully pressure their legal department to give you a specific written exemption.
Re:attorney - and you're probably wrong. Fail. (Score:2, Interesting)
Similar situation, my solution:
1. Wrote a non-trivial GPLed library of functions that would be useful to the SSHRC project, but not specifically for it, nor paid by the university for it.
2. Based research-related code based on the library, with full knowledge of the PI.
3. Profit.
Also #25970817 is wise, as this is an issue in Canada.
Re:Negotiate. (Score:2, Interesting)
If they're using his software, without having secured any of the rights to it yet -- may be he could sue too.
Re:Not always. (Score:3, Interesting)
Things can get complicated.
I know nothing of how it works in the US, but in Norway it all depends on the contract.
If your job descrition includes programming and development, employer has every right to the IP.
On the other hand, if your job description does not involve programming or development you most likey have the IP rights on your side.
Same goes for researchers. If a researcher discovers something it is IP of the employer, because that's what you are hired to do. Should the cleaning personell happen to develop a clever way to clean the floors the employer does not automagically retain IP rights.
true, but it may make some questions moot (Score:3, Interesting)
Many university IP contracts specifically allow researchers to release their software under free-software licenses. If his does, and if that were his intent, then it wouldn't be necessary to resolve the question of whether they can claim any rights, since the free-software license would be valid either way.
If, on the other hand, his intent is to make a proprietary commercial software product out of it, and avoid them getting a cut of the royalties, then he would be more interested in the specifics of IP ownership.
Don't give anything away (Score:4, Interesting)
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.
Re:Not always. (Score:5, Interesting)
Never loose code (Score:2, Interesting)
I have worked on both industry and academic projects. If they really want to own and "close source" the code I write, then they have to pay a hell of a lot more than if they just want to open source it. Academia never pays that much, so I always:
1) negotiate for personal ownership or charte blanche open source.
Usually the contract negotiator has no clue and agrees.
If that is not possible then
2) make very liberal use of gpl code in my project after clearing with group leader.
The latter approach is usually very appealing to lower management, i.e. group leaders, since it brings higher productivity and faster results that will be easier to maintain in the future.
Re:Negotiate. (Score:1, Interesting)
You don't even have to be sneaky. Just cross out the parts you don't like, sign it and turn it in. If they accept it, it is legally binding.