Can a contract give copyrights for something made during/with personal time/resources

[jbs1583]

What is the name of your state (only U.S. law)? Colorado

Is it possible for a contract to grant to the company the copyrights for anything produced by the employee, regardless of whether or not the work is produced for the company or merely by the employee during their own time and with their own resources? I have been job hunting lately and seen some copyright related sections of non-disclosure agreements that sound like they grant the company rights to ANYTHING the employee makes, not just what the employee makes for them. There is no distinction made that I can see. Especially in the following case:

The parties recognize and understand that all copyrights covering all works authored by Employee, including without limitation all writings,
shall be the sole property of the Company. Said works are “works made for hire” under the Copyright Act of 1976. Employee agrees that all works
described above shall be the property of the Company regardless of whether any court or tribunal of competent jurisdiction declares that any such work
does not constitute a “work made for hire.” Accordingly, all of the rights comprised in the copyright of said works shall vest in the Company, and its
successors and assigns, as the sole and absolute owner. Employee shall cooperate as necessary to assist the Company in its application for any and all
copyrights of said works authored by Employee.

 

[quincy]

What is the name of your state (only U.S. law)? Colorado

Is it possible for a contract to grant to the company the copyrights for anything produced by the employee, regardless of whether or not the work is produced for the company or merely by the employee during their own time and with their own resources? I have been job hunting lately and seen some copyright related sections of non-disclosure agreements that sound like they grant the company rights to ANYTHING the employee makes, not just what the employee makes for them. There is no distinction made that I can see. Especially in the following case:

The parties recognize and understand that all copyrights covering all works authored by Employee, including without limitation all writings,
shall be the sole property of the Company. Said works are “works made for hire” under the Copyright Act of 1976. Employee agrees that all works
described above shall be the property of the Company regardless of whether any court or tribunal of competent jurisdiction declares that any such work
does not constitute a “work made for hire.” Accordingly, all of the rights comprised in the copyright of said works shall vest in the Company, and its
successors and assigns, as the sole and absolute owner. Employee shall cooperate as necessary to assist the Company in its application for any and all
copyrights of said works authored by Employee.

First, a contract is any agreement made between two or more parties that create obligations on the part of all. These agreements are generally legally enforceable if they are not found unconscionable or otherwise outside the boundaries of law.

A "work for hire" clause in an employment contract will generally be found enforceable if the copyrighted works created by an employee are created within the scope of the employee's employment duties.

There are several factors that a court will look at to determine who holds the rights in a work. If the employee is being paid by the employer to create a work, whether the work is created at home or not, this favors the employer. If the employee creates a work independent of his employment and uses his own tools to create the work (e.g., does not use a company computer or resources), this favors the employee. Also considered will be who controls what is created and the tax treatment of the employee.

If you have concerns about how a contract is worded and believe you may be giving up more rights to your works than you wish to give up, you can have an attorney in your area review the contract. I would question a sentence in a contract that says "employee agrees that all works described above shall be the property of the Company regardless of whether any court or tribunal of competent jurisdiction declares that any such work does not constitute a work made for hire."

It can be possible to strike out certain portions of a contract or reword certain portions of a contract that you find objectionable, but there is no guarantee that the Company will accept the changes.

Whatever you decide to do, however, I recommend you do NOT sign any contract that legally binds you to the terms without first understanding exactly what it is you are agreeing to.

Good luck.

 

[FlyingRon]

Yes, it behooves you to get these issues worked out in advance. I worked as a VP for a very litigious and agressive engineering company (not my doing, we were bought out by these guys).
Essentially, our default employment agreement says just about everything you do that is in anyway related to the company is ours. Even if you do it on your own time, on your own equipment, the argument is that involves information you developed based on your work with us. I can tell you we wouldn't hesitate to stomp on you for anything that would infringe on our product. Other items would certainly be suspect.

However, we well educate our employees on this (not just in what is in the contract). There are all sorts of annual training on conflicts of interest on outside work, etc....

We were very liberal with people who wanted to do work largely unrelated to us. I had a guy who designed racing boat hulls. Now admittedly, we did some work back in the day with some of the America's cup stuff, but it's really not our business. I ran the proposal up the corporate hierarchy and got him an exemption for anything related to boat hulls. (Another division does build amphibious vehicles, but they are pretty well removed from us).

 

[quincy]

... I ran the proposal up the corporate hierarchy and got him an exemption for anything related to boat hulls. ...

While a company might provide exemptions, I certainly wouldn't count on that.

What you sign is what legally commits you and, while terms and conditions of a contract can be argued in court, you want to avoid court actions when possible. I would be wary of signing away all of your rights to work you create independent of your employment.