Who OWNS The Intellectual Rights?
by R. Hall · in General Discussion · 12/30/2003 (8:52 am) · 10 replies
Hi All,
I did a quick search here & found no answers so I open this scenerio up because I feel that in these Forums come some of the greatest minds around, & I would like to find some sort of an answer.
I know this is a little different, or off-subject from games but it very well could apply to more areas such as game development. So, here's my question(s):
1) I work for Company "A"
2) Company "B" hires us to develop an entire Web Site.
3) I, as an employee of Company "A" do ALL the development
4) I do ALL the develpment OFF my employers time & OFF site
5) I get a split of what Company "B" pays Company "A"
RESULT:
Who OWNS the intellectual Rights? Company "A" or Company "B" or myself? The way I see it is that Company "B" should own the rights since they hired us as a "Work For Hire" even though there are no agreements signed.
I know that since I am an employee of Company "A" that anything I create through this company (& am paid on company time), is owned by this company, but since I am NOT doing this on his time, or premises, does that make a difference? There has been NO "Work For Hire" agreements signed via myself or any company. Now, the company I work for wants to go so far as to say that ANYTHING I even invent that could be Patented would belong to him 100% as well! (but I seriously doubt my company would want to pay for a Patent Search, etc)!
As you can see, this could apply to game develpment as well & since I think there are some great "legal eagles" here I thought I'd like to throw this out for some answers.
Thanks for any answers & ideas you can give.
I did a quick search here & found no answers so I open this scenerio up because I feel that in these Forums come some of the greatest minds around, & I would like to find some sort of an answer.
I know this is a little different, or off-subject from games but it very well could apply to more areas such as game development. So, here's my question(s):
1) I work for Company "A"
2) Company "B" hires us to develop an entire Web Site.
3) I, as an employee of Company "A" do ALL the development
4) I do ALL the develpment OFF my employers time & OFF site
5) I get a split of what Company "B" pays Company "A"
RESULT:
Who OWNS the intellectual Rights? Company "A" or Company "B" or myself? The way I see it is that Company "B" should own the rights since they hired us as a "Work For Hire" even though there are no agreements signed.
I know that since I am an employee of Company "A" that anything I create through this company (& am paid on company time), is owned by this company, but since I am NOT doing this on his time, or premises, does that make a difference? There has been NO "Work For Hire" agreements signed via myself or any company. Now, the company I work for wants to go so far as to say that ANYTHING I even invent that could be Patented would belong to him 100% as well! (but I seriously doubt my company would want to pay for a Patent Search, etc)!
As you can see, this could apply to game develpment as well & since I think there are some great "legal eagles" here I thought I'd like to throw this out for some answers.
Thanks for any answers & ideas you can give.
About the author
#2
If there is no contract (bad idea), then you own the portion that you worked on. Most likely, your employment contract or work-for-hire contract will specify that you give up your portion of the intellectual property and will be compensated for it payment-wise.
There have been a lot of game companies that have had problems with art assets because they didn't stipulate in their work-for-hire agreements that all ownership was transferred to the company.
12/30/2003 (9:08 am)
It depends on the terms of your contract more than anything.If there is no contract (bad idea), then you own the portion that you worked on. Most likely, your employment contract or work-for-hire contract will specify that you give up your portion of the intellectual property and will be compensated for it payment-wise.
There have been a lot of game companies that have had problems with art assets because they didn't stipulate in their work-for-hire agreements that all ownership was transferred to the company.
#3
As an employee working for company A, you usually have no IP rights to the software, and in most cases I have encountered, nor does the client (Company b). Company b owns the software implementation, but not the technology IP utilised in the solution.
This can of course be negotiated up front by yourself, or the by the client, but in my experience it needs to be a specific term of employment in both cases, and usually entails a cost penalty of some type.
Software development companies are loathe to negotiate on IP, but if you bring a hard-to-get skill to the table, they may be prepared to talk.
As a employee/developer I know this sucks, but as a Software Development company I can see the logic. These are my clients and my reputation and ultimately the buck for results/quality/knowhow stops with me, so...
Futhermore, employees come and go but as the development company, I need to retain knowhow and expertise, and the IP of past products is an effective way to retain and get new clients, as well as a means to getting new employees oriented in the company.
Sorta makes sense if you take into account where the risk lies, but then I've worn both sets of shoes and have griped at it both ways.
12/30/2003 (9:35 am)
In my experience, (Europe and South Africa), most companies that provide developmental products to clients retain the IP for the software they develop.As an employee working for company A, you usually have no IP rights to the software, and in most cases I have encountered, nor does the client (Company b). Company b owns the software implementation, but not the technology IP utilised in the solution.
This can of course be negotiated up front by yourself, or the by the client, but in my experience it needs to be a specific term of employment in both cases, and usually entails a cost penalty of some type.
Software development companies are loathe to negotiate on IP, but if you bring a hard-to-get skill to the table, they may be prepared to talk.
As a employee/developer I know this sucks, but as a Software Development company I can see the logic. These are my clients and my reputation and ultimately the buck for results/quality/knowhow stops with me, so...
Futhermore, employees come and go but as the development company, I need to retain knowhow and expertise, and the IP of past products is an effective way to retain and get new clients, as well as a means to getting new employees oriented in the company.
Sorta makes sense if you take into account where the risk lies, but then I've worn both sets of shoes and have griped at it both ways.
#4
Yes, I am going to check on the State-to-State issue. But actually, talking to my boss at this point is "null." His mentality is that he is right & there are no if-ands-or-buts. Perhaps in the future, maybe. What I have done in the past is to create things that I don't mind "giving away" as far as sites are concerned. I thought I could later, if needed, adapt them & use them elsewhere, but I generally don't like to create any 2 sites alike.
There has been no contracts signed of any type whatsoever. I was simply hired as an employee to do a job that originally had nothing to do with what I am doing now. Originally it was "just a job" type of thing, to do one thing, but now I wear many hats.
I used to deal in this type of thing many years ago as a songwriter so I kind of remember what laws pertain there, but it has been way too long.
Thanks Again.
I'm off to do more searching.
12/30/2003 (9:39 am)
Thanks for some quick answers.Yes, I am going to check on the State-to-State issue. But actually, talking to my boss at this point is "null." His mentality is that he is right & there are no if-ands-or-buts. Perhaps in the future, maybe. What I have done in the past is to create things that I don't mind "giving away" as far as sites are concerned. I thought I could later, if needed, adapt them & use them elsewhere, but I generally don't like to create any 2 sites alike.
There has been no contracts signed of any type whatsoever. I was simply hired as an employee to do a job that originally had nothing to do with what I am doing now. Originally it was "just a job" type of thing, to do one thing, but now I wear many hats.
I used to deal in this type of thing many years ago as a songwriter so I kind of remember what laws pertain there, but it has been way too long.
Thanks Again.
I'm off to do more searching.
#5
12/30/2003 (9:52 am)
Check your employment contract. That's where you'll find the necessary information. I have a huge binder for my job at the university, but the relevant section says that anything I create for work is the university's property.
#6
Anything you create for the company and they pay you for is theirs. Example:
you design a logo for your employers client, as far as you are concerned your employer owns the rights to the design. Unless you have in writing otherwise.
Anything you do for anyone that pays you for your time and/or materials owns what they paid for. Example:
You build a model and texture and animate it for someone for their game. They pay you a reasonable amount for your effort. Everything belongs to them unless you have something in writing that says different.
Anything you do for yourself and never give to anyone else is yours. Example:
You write a game off the clock and it has nothing to do with your employers business they have no claim to it. Unless your employment contract states otherwise.
Your example:
1) I work for Company "A"
2) Company "B" hires us to develop an entire Web Site.
3) I, as an employee of Company "A" do ALL the development
4) I do ALL the develpment OFF my employers time & OFF site
#4 is irrelevant, where you work has no bearing on the issue, it has everything to do with who is paying whom.
5) I get a split of what Company "B" pays Company "A"
If B pays A and then A pays you the split A you own nothing.
IF B pays A and you then you still own nothing unless you negotited a contract with B AND A that states you retain ownership of whatever.
If B pays you and you pay A the split you still own nothing unless you have something in writing with B.
This is very simplistic and there are much more nuances than described here, and I am no lawyer but this is the 'gist of what my lawyer(s) have told me in the past.
12/30/2003 (12:45 pm)
It is really pretty simple unless there are contracts that say otherwise.Anything you create for the company and they pay you for is theirs. Example:
you design a logo for your employers client, as far as you are concerned your employer owns the rights to the design. Unless you have in writing otherwise.
Anything you do for anyone that pays you for your time and/or materials owns what they paid for. Example:
You build a model and texture and animate it for someone for their game. They pay you a reasonable amount for your effort. Everything belongs to them unless you have something in writing that says different.
Anything you do for yourself and never give to anyone else is yours. Example:
You write a game off the clock and it has nothing to do with your employers business they have no claim to it. Unless your employment contract states otherwise.
Your example:
1) I work for Company "A"
2) Company "B" hires us to develop an entire Web Site.
3) I, as an employee of Company "A" do ALL the development
4) I do ALL the develpment OFF my employers time & OFF site
#4 is irrelevant, where you work has no bearing on the issue, it has everything to do with who is paying whom.
5) I get a split of what Company "B" pays Company "A"
If B pays A and then A pays you the split A you own nothing.
IF B pays A and you then you still own nothing unless you negotited a contract with B AND A that states you retain ownership of whatever.
If B pays you and you pay A the split you still own nothing unless you have something in writing with B.
This is very simplistic and there are much more nuances than described here, and I am no lawyer but this is the 'gist of what my lawyer(s) have told me in the past.
#7
1. It does not matter how you spend your time working on a project for company #A (your employer), all your work is owned by company #A. Now, if company #A sells to company #B, then the property is #B.
Easy cheesy.. :D
12/30/2003 (1:41 pm)
I work as a programmer on both my day and night job. So this is a disclaimer, as I am not a lawyer but is versed in such situations.1. It does not matter how you spend your time working on a project for company #A (your employer), all your work is owned by company #A. Now, if company #A sells to company #B, then the property is #B.
Easy cheesy.. :D
#8
As a regular employee, anything you generate on company time belongs to the company that employs you. As a contract employee, the ip rights should be set down on paper in your contract. As an intern or apprenticeship recipient, the ip rights should be set down in the contract as well.
When the rights aren't set (as in a small company that's just getting its feet wet and having trouble paying its employees), things get really, really hairy.
12/30/2003 (2:43 pm)
I just reread my post and noticed that it didn't make a lot of sense. Instead of editing it, I'll just clarify.As a regular employee, anything you generate on company time belongs to the company that employs you. As a contract employee, the ip rights should be set down on paper in your contract. As an intern or apprenticeship recipient, the ip rights should be set down in the contract as well.
When the rights aren't set (as in a small company that's just getting its feet wet and having trouble paying its employees), things get really, really hairy.
#9
I suggest adding a contract to your work if you want to retain that property but this may pose problems with full-time employers. Contract jobs can be negotiable as to what you own. Usually when you are hired full-time they have some sort of documentation that you sign that states that all is theirs.
Stan Lee ran into this problem with Marvel. Be careful if its work that can be bigger than your current job. Most of the time though the work you do is to help your career along to get to where you can own the rights to it all and the shop.
12/30/2003 (7:08 pm)
Its not yours in anyway if there is no contract stating otherwise. Would you have done that work had it not been for Company A or Company B? That doesn't mean you can't use the work as "inspiration" (no direct copy) in future projects but you were paid to create something for Company B who was hired by Company A who hired you to do the work. I suggest adding a contract to your work if you want to retain that property but this may pose problems with full-time employers. Contract jobs can be negotiable as to what you own. Usually when you are hired full-time they have some sort of documentation that you sign that states that all is theirs.
Stan Lee ran into this problem with Marvel. Be careful if its work that can be bigger than your current job. Most of the time though the work you do is to help your career along to get to where you can own the rights to it all and the shop.
#10
I knew I came to the right place here.
When I do contract work it is stated what belongs to whom, etc. But for some unknown reason (as yet explained or known), my boss just popped this up to me all at once about the IP Rights.
Again, thank you all. I have learned, & relearned some things here...& will continue to tread these murky waters but will have a lifeboat (contract) ready when needed for the "next" time my employer wants me to develop something important.
12/31/2003 (3:49 pm)
Thanks for ALL of your answers.I knew I came to the right place here.
When I do contract work it is stated what belongs to whom, etc. But for some unknown reason (as yet explained or known), my boss just popped this up to me all at once about the IP Rights.
Again, thank you all. I have learned, & relearned some things here...& will continue to tread these murky waters but will have a lifeboat (contract) ready when needed for the "next" time my employer wants me to develop something important.
Torque 3D Owner Ted Southard
In the first situation, you're working for Company A, and Company B is the owner of the IP(they requested it created, and you, as an employee of Company A, did that). It doesn't matter than you did it on your own time, it really just means you did it on your own time. I would look over your initial job contract(if you signed one) for specifics.
As for the company owning any IP that you create, even on your own time, well... That gets a bit hairy, and I think that if you have real concerns about it, talk to your employer about those concerns(they may strike or modify that clause), or talk to legal counsel. Thing is, anyone can be a lawyer on the 'net, but the legality or nuances of the laws regarding that vary state-to-state and country-to-country.