IP Rights - Who

[Nacho]

Hi

I am involved in a program development that has turned sour. In my latest meeting, I have been provided with a contract to sign that basically assigns all IP rights to the main Company including but not limited to any related programming I have done. Until I sign the contract, who owns the IP rights and can they limit me to not programming any further to anything related?

I have been working on the project now for about 18 months. I was initially paid by the week as a standard contractor and 6 months ago, the title was changed to development contractor and my pay method was changed. I was to estimate in hours how long I thought it would take and that estimate would then be multiplied by an hourly rate and made into a fixed price. I have worked about 300 hours of my own personal time which the Company says is my investment to the project with view of getting a return when it becomes financially viable however, I have recently learned that there are in fact 3 Companies. The Company that I am invoicing to (Company A), A Company that is assuming ownership of the software (Company B) and another Consulting Company that will be the service provider (Company C). Company A is paying, Company B is where my investment time is being placed and Company C will be the one getting paid. I am limited to Company A which has no relation to the software or Companies B/C). How would I ever get a return on my investment if Company A / B never get financial benefits from the software?

In total, I am owed about �15k for my time in unpaid fees. I never received a scope or even a brief description. I received a verbal instruction on what was required and I have solely designed & developed this program. The Company now wants to employ a separate programming partner and move me out of the project. so, who owns the IP for this? Do I own it because I have designed & created this or do they own it because I have received payments for it? Their 'Tangible Asset' as they keep referring to is in their hands and is being used to provide services. This is in the form of an executable file. The Source code is with me and they want it. Who owns what?

The Contract is asking me to indemnify the software for all future purposes and be 100% liable for any breakdowns. IT is also asking me to accept all legal fees and other 3rd party fees for any reason that the software may fail due to poor instruction of the software to another developer. Is this right?

as it stands right now, there is no contract in place because I have not signed it. I have said that I would be happy to sign a contract for IP assignment upon receipt of final payments and I want to limit the functions I have created inside the source code to the purposes of the application and not allow re-use of my functions and coding for any other future applications that are not directly related to this application. Can I do that? Obviously I will not be signing this contract, that would be like hanging myself....


Any advice greatly appreciated

Nacho

 

[Zigner]

Sorry, this forum is for US law only.

 

[quincy]

Hi

I am involved in a program development that has turned sour. In my latest meeting, I have been provided with a contract to sign that basically assigns all IP rights to the main Company including but not limited to any related programming I have done. Until I sign the contract, who owns the IP rights and can they limit me to not programming any further to anything related?

I have been working on the project now for about 18 months. I was initially paid by the week as a standard contractor and 6 months ago, the title was changed to development contractor and my pay method was changed. I was to estimate in hours how long I thought it would take and that estimate would then be multiplied by an hourly rate and made into a fixed price. I have worked about 300 hours of my own personal time which the Company says is my investment to the project with view of getting a return when it becomes financially viable however, I have recently learned that there are in fact 3 Companies. The Company that I am invoicing to (Company A), A Company that is assuming ownership of the software (Company B) and another Consulting Company that will be the service provider (Company C). Company A is paying, Company B is where my investment time is being placed and Company C will be the one getting paid. I am limited to Company A which has no relation to the software or Companies B/C). How would I ever get a return on my investment if Company A / B never get financial benefits from the software?

In total, I am owed about �15k for my time in unpaid fees. I never received a scope or even a brief description. I received a verbal instruction on what was required and I have solely designed & developed this program. The Company now wants to employ a separate programming partner and move me out of the project. so, who owns the IP for this? Do I own it because I have designed & created this or do they own it because I have received payments for it? Their 'Tangible Asset' as they keep referring to is in their hands and is being used to provide services. This is in the form of an executable file. The Source code is with me and they want it. Who owns what?

The Contract is asking me to indemnify the software for all future purposes and be 100% liable for any breakdowns. IT is also asking me to accept all legal fees and other 3rd party fees for any reason that the software may fail due to poor instruction of the software to another developer. Is this right?

as it stands right now, there is no contract in place because I have not signed it. I have said that I would be happy to sign a contract for IP assignment upon receipt of final payments and I want to limit the functions I have created inside the source code to the purposes of the application and not allow re-use of my functions and coding for any other future applications that are not directly related to this application. Can I do that? Obviously I will not be signing this contract, that would be like hanging myself....


Any advice greatly appreciated

Nacho

In the US, if what you created/produced was in the regular course of your business duties as an employee of the company, the company would generally own what you created.

Who actually owns the IP, however, depends on your country, and on how you were treated by the company for tax purposes, and on several different other factors.

Can you please provide us with your state name, Nacho, or if not in the US, the name of your country? Thanks.

 

[Nacho]

Hi

I am actually in the US but the Company is in the UK. I have been treated as a contractor Company NOT an employee. I invoiced for works carried out using my Company name.

I was working from Texas

Thanks

Nacho

 

[LdiJ]

Hi

I am involved in a program development that has turned sour. In my latest meeting, I have been provided with a contract to sign that basically assigns all IP rights to the main Company including but not limited to any related programming I have done. Until I sign the contract, who owns the IP rights and can they limit me to not programming any further to anything related?

I have been working on the project now for about 18 months. I was initially paid by the week as a standard contractor and 6 months ago, the title was changed to development contractor and my pay method was changed. I was to estimate in hours how long I thought it would take and that estimate would then be multiplied by an hourly rate and made into a fixed price. I have worked about 300 hours of my own personal time which the Company says is my investment to the project with view of getting a return when it becomes financially viable however, I have recently learned that there are in fact 3 Companies. The Company that I am invoicing to (Company A), A Company that is assuming ownership of the software (Company B) and another Consulting Company that will be the service provider (Company C). Company A is paying, Company B is where my investment time is being placed and Company C will be the one getting paid. I am limited to Company A which has no relation to the software or Companies B/C). How would I ever get a return on my investment if Company A / B never get financial benefits from the software?

In total, I am owed about �15k for my time in unpaid fees. I never received a scope or even a brief description. I received a verbal instruction on what was required and I have solely designed & developed this program. The Company now wants to employ a separate programming partner and move me out of the project. so, who owns the IP for this? Do I own it because I have designed & created this or do they own it because I have received payments for it? Their 'Tangible Asset' as they keep referring to is in their hands and is being used to provide services. This is in the form of an executable file. The Source code is with me and they want it. Who owns what?

The Contract is asking me to indemnify the software for all future purposes and be 100% liable for any breakdowns. IT is also asking me to accept all legal fees and other 3rd party fees for any reason that the software may fail due to poor instruction of the software to another developer. Is this right?

as it stands right now, there is no contract in place because I have not signed it. I have said that I would be happy to sign a contract for IP assignment upon receipt of final payments and I want to limit the functions I have created inside the source code to the purposes of the application and not allow re-use of my functions and coding for any other future applications that are not directly related to this application. Can I do that? Obviously I will not be signing this contract, that would be like hanging myself....


Any advice greatly appreciated

Nacho

You definitely need to refuse to sign ANY contract that contains the bolded language. In fact, you should probably pay an attorney to review any contract that you are considering signing, before you actually sign.

 

[quincy]

Hi

... In my latest meeting, I have been provided with a contract to sign that basically assigns all IP rights to the main Company including but not limited to any related programming I have done. Until I sign the contract, who owns the IP rights and can they limit me to not programming any further to anything related?

I have been working on the project now for about 18 months. I was initially paid by the week as a standard contractor and 6 months ago, the title was changed to development contractor and my pay method was changed. I was to estimate in hours how long I thought it would take and that estimate would then be multiplied by an hourly rate and made into a fixed price. I have worked about 300 hours of my own personal time which the Company says is my investment to the project with view of getting a return when it becomes financially viable however, I have recently learned that there are in fact 3 Companies. The Company that I am invoicing to (Company A), A Company that is assuming ownership of the software (Company B) and another Consulting Company that will be the service provider (Company C). Company A is paying, Company B is where my investment time is being placed and Company C will be the one getting paid. I am limited to Company A which has no relation to the software or Companies B/C). How would I ever get a return on my investment if Company A / B never get financial benefits from the software?

In total, I am owed about �15k for my time in unpaid fees. I never received a scope or even a brief description. I received a verbal instruction on what was required and I have solely designed & developed this program. The Company now wants to employ a separate programming partner and move me out of the project. so, who owns the IP for this? Do I own it because I have designed & created this or do they own it because I have received payments for it? Their 'Tangible Asset' as they keep referring to is in their hands and is being used to provide services. This is in the form of an executable file. The Source code is with me and they want it. Who owns what?

The Contract is asking me to indemnify the software for all future purposes and be 100% liable for any breakdowns. IT is also asking me to accept all legal fees and other 3rd party fees for any reason that the software may fail due to poor instruction of the software to another developer. Is this right?

as it stands right now, there is no contract in place because I have not signed it. I have said that I would be happy to sign a contract for IP assignment upon receipt of final payments and I want to limit the functions I have created inside the source code to the purposes of the application and not allow re-use of my functions and coding for any other future applications that are not directly related to this application. Can I do that? Obviously I will not be signing this contract, that would be like hanging myself....


Any advice greatly appreciated

Nacho

With no contract currently in place that assigns the source code to the UK company, and under the terms of employment you are describing here, it sounds as if you needed to sign a contract with the company in order to transfer rights in what you have created to this company. It appears the company has fumbled a bit and is now trying to recover with an agreement that does not appear to be in your best interests to sign.

You can structure your own agreement - one that not only protects your rights in future works but also eliminates or limits your liability in what you created - BUT in order to do this you will want to have an IP attorney in your area review all facts relating to your employment. You will need to carefully draft the agreement before presenting it to the company to replace what they have presented to you for your signature.

The attorney will want to personally review the work you have done for the company and under what terms it was created (the scope of your employment duties for the company, how your work was completed and under whose direction and with whose material, the method of payment over the length of your time working for the company ...) and the attorney will want a good working knowledge of UK IP laws as well as the US laws that can come into play should the company decide to take legal action against you.

I definitely recommend you do not sign anything without this personal review. The bottom line for me is that I see several problems with the type of agreement the company wishes you to sign.

Good luck.

 

[Nacho]

Hi

Thanks for the reply. Its all a bit messy if I'm honest. How it started...

I am actually a 3D retail designer with vb.net programming experience. The Company I was contracting to as a designer had a project idea that we discussed and they asked me if I could do it. I said I could and so it started. There were no agreements n place at this time. They found that they could claim back the value of payments as R & D from the tax if they logged it as time so, I was asked to estimate a time period in hours. The estimate would be converted to a fixed price that I can invoice every 2 weeks after parts of the project were completed. I was to invoice as time spend for their tax claim at the end of the year.

During this time period, they had lots of changes and additions to add which were done on the fly and I had to provide costs as time for this. They emailed me and said that I need to invest a certain amount of time to show commitment (as they had already offered a 20% stake in a new company which I declined) and I would receive a share of any profit as the company and application progressed.

Part way down the project when I had added roughly 200 hours of my own time into this project, they decided that they were not going to pay me any more money and chose to re-word the change requests from them to be corrections liable to me. with back and forth emails, I was paid a bit more but everything in the relationship went sour. With their recent provision of the contract that seemed to leave me responsible for everything, I decided that I no longer wanted part of the project and I have asked for my investment of time to paid back to me. Then they could re-word the contract to which I would have checked by a Lawyer and then they could have the source code and IP rights.

I received an email telling me that if I signed the contract, trained a new programmer, carried out a major update they desperately need and assigned all rights to them, then I would get paid for the update and we could discuss the investment later in the year but experience tells me that once I have signed the rights over, they never need to speak to me again.

Right now, I have received an email telling me that they are seeking legal advice and that I have lost sight on who actually owns what. Their contract states that I actually own the rights.


Its all a bit confusing


Cheers

Nacho

 

[quincy]

... Right now, I have received an email telling me that they are seeking legal advice and that I have lost sight on who actually owns what. Their contract states that I actually own the rights ...

I think it is smart that the company is seeking legal advice and I recommend you do the same. You are right that what you are describing is a confusing mess.

The lesson to take away from this experience is to make sure you have contracts you fully understand and that these contracts are in place before any work starts.

Good luck, Nacho.

 

[LdiJ]

Hi

Thanks for the reply. Its all a bit messy if I'm honest. How it started...

I am actually a 3D retail designer with vb.net programming experience. The Company I was contracting to as a designer had a project idea that we discussed and they asked me if I could do it. I said I could and so it started. There were no agreements n place at this time. They found that they could claim back the value of payments as R & D from the tax if they logged it as time so, I was asked to estimate a time period in hours. The estimate would be converted to a fixed price that I can invoice every 2 weeks after parts of the project were completed. I was to invoice as time spend for their tax claim at the end of the year.

During this time period, they had lots of changes and additions to add which were done on the fly and I had to provide costs as time for this. They emailed me and said that I need to invest a certain amount of time to show commitment (as they had already offered a 20% stake in a new company which I declined) and I would receive a share of any profit as the company and application progressed.

Part way down the project when I had added roughly 200 hours of my own time into this project, they decided that they were not going to pay me any more money and chose to re-word the change requests from them to be corrections liable to me. with back and forth emails, I was paid a bit more but everything in the relationship went sour. With their recent provision of the contract that seemed to leave me responsible for everything, I decided that I no longer wanted part of the project and I have asked for my investment of time to paid back to me. Then they could re-word the contract to which I would have checked by a Lawyer and then they could have the source code and IP rights.

I received an email telling me that if I signed the contract, trained a new programmer, carried out a major update they desperately need and assigned all rights to them, then I would get paid for the update and we could discuss the investment later in the year but experience tells me that once I have signed the rights over, they never need to speak to me again.

Right now, I have received an email telling me that they are seeking legal advice and that I have lost sight on who actually owns what. Their contract states that I actually own the rights.


Its all a bit confusing


Cheers

Nacho

Let them consult their attorney. There is no contract. Do not sign.

 

[quincy]

... I received an email telling me that if I signed the contract, trained a new programmer, carried out a major update they desperately need and assigned all rights to them, then I would get paid for the update and we could discuss the investment later in the year ...

The above quoted excerpt, as a note, seems an absurd demand made by the company.

Again, you should see an attorney in your area to address the IP issues, the contract issues, and also payment issues.

Good luck.

 

[Nacho]

The above quoted excerpt, as a note, seems an absurd demand made by the company.

Again, you should see an attorney in your area to address the IP issues, the contract issues, and also payment issues.

Good luck.

Hi all

to provide an update:

The company revised a contract to remove imdemnity from me but still still insist that they own the IP even though their contact to me states that i am the current owner if the IP. also, they had an internal meeting and determined that they 'felt' i had been paid enough even though i have over 200 hours outstanding currently unpaid. I said to them that what they felt was irrespective to the current matter of actual worked hours currently unpaid.

i raised them an invoice for the outstanding amount and have now been chasing this invoice with view of going down the correct route of unpaid invoices.

I had given them plenty of opportunity to resolve and offered settlementsbut they were ignored. Am i doing the right thing or can it be argued that they dont have to pay? I am quite willing to assign IP as long as they pay me the money i am owed.


thanks

Nacho

 

[quincy]

Hi all

to provide an update:

The company revised a contract to remove imdemnity from me but still still insist that they own the IP even though their contact to me states that i am the current owner if the IP. also, they had an internal meeting and determined that they 'felt' i had been paid enough even though i have over 200 hours outstanding currently unpaid. I said to them that what they felt was irrespective to the current matter of actual worked hours currently unpaid.

i raised them an invoice for the outstanding amount and have now been chasing this invoice with view of going down the correct route of unpaid invoices.

I had given them plenty of opportunity to resolve and offered settlementsbut they were ignored. Am i doing the right thing or can it be argued that they dont have to pay? I am quite willing to assign IP as long as they pay me the money i am owed.


thanks

Nacho

I assume from your update, Nacho, that you did not see an attorney in your area for a review of the contract and to advise you on your negotiations with the company. I recommend you do so before signing any agreement.

I cannot tell you whether what you are doing is "the right thing." Certainly if you have not been paid for the work you have done, you deserve to be paid. And I personally would be wary of signing any IP rights over to the company until you are satisfied with the agreement and amount to be paid for these rights.

But all facts need to be known to see where both you and the company stand legally when it comes to the work you have done for the company, so again, it would be smart for you to speak with an attorney in your area.

Thank you for letting us know what has been going on with you, Nacho. Good luck.