Intellectual Property help

[bridge385]

I live in New York. I'm currently employed with a software company and before starting my employment I signed a contract with the company which stated that any intellectual property that subsists or may subsist during employment would be transferred to them. I created my own software application which I created prior to joining the company but for which I added some new features during employment. I plan to leave this company and sell this software under my own company. I don't plan on copyrighting the software. Does my current employer still have a case to say that this software belongs to them even though it's not copyrighted and I don't plan on doing so?

 

[LdiJ]

I live in New York. I'm currently employed with a software company and before starting my employment I signed a contract with the company which stated that any intellectual property that subsists or may subsist during employment would be transferred to them. I created my own software application which I created prior to joining the company but for which I added some new features during employment. I plan to leave this company and sell this software under my own company. I don't plan on copyrighting the software. Does my current employer still have a case to say that this software belongs to them even though it's not copyrighted and I don't plan on doing so?

Were the new features extensive enough that it could be argued that the software was substantially created during your employment?

You are probably going to be best served by having a local attorney review the contract that you signed.

 

[adjusterjack]

I don't plan on copyrighting the software.

That's a big mistake. You have copyright protection from the day you developed it but registration makes the protection even stronger.

 

[quincy]

I live in New York. I'm currently employed with a software company and before starting my employment I signed a contract with the company which stated that any intellectual property that subsists or may subsist during employment would be transferred to them. I created my own software application which I created prior to joining the company but for which I added some new features during employment. I plan to leave this company and sell this software under my own company. I don't plan on copyrighting the software. Does my current employer still have a case to say that this software belongs to them even though it's not copyrighted and I don't plan on doing so?

Yes. Your employer has a case to say that the copyrights in the software belongs to the employer, if you worked on the software on company time using company resources.

Was creating software part of your employment duties?

Copyrights exist in a work as soon as the work is fixed in tangible form (e.g., pen to paper, paint to canvas). The copyright is automatic.

Registration with the US Copyright Office is not required for a work to have copyright protection but copyright registration provides the work with additional protection. Not only does copyright registration provide a date of creation and a (rebuttable) presumption of copyright ownership, the holder of a registered copyright also becomes eligible for statutory damages if the work is infringed ($750-$150,000/work).

The holder of an unregistered copyright must register their copyright prior to filing an infringement lawsuit and then will be limited to collecting damages for demonstrable losses/infringer’s profits. No statutory damages.

You should have your employment contract, that transfers rights in the work to your employer, personally reviewed by an IP attorney in your area.

 

[zddoodah]

I signed a contract with the company which stated that any intellectual property that subsists or may subsist during employment would be transferred to them.

The exact language of this agreement is important. Can you quote it (with any names removed or changed)?

I don't plan on copyrighting the software.

The word "copyright" is not properly used as a verb. A copyright exists from the moment a qualifying work is fixed in a tangible medium of expression. Thus, a copyright in your software likely already exists. I assume what you meant is that you don't intend to register your copyright, which is fine (since registration is not a prerequisite to the existence of copyright) but unwise.

Does my current employer still have a case to say that this software belongs to them even though it's not copyrighted and I don't plan on doing so?

The portion of this sentence from "even though" through the end is meaningless, and the answer to the question depends on exactly what your contract says.

 

[quincy]

The exact language of this agreement is important. Can you quote it (with any names removed or changed)?



The word "copyright" is not properly used as a verb. A copyright exists from the moment a qualifying work is fixed in a tangible medium of expression. Thus, a copyright in your software likely already exists. I assume what you meant is that you don't intend to register your copyright, which is fine (since registration is not a prerequisite to the existence of copyright) but unwise.



The portion of this sentence from "even though" through the end is meaningless, and the answer to the question depends on exactly what your contract says.

Because no one on this forum can analyze contracts, there is no reason for bridge385 to quote the contract, in part or in whole. Contract review and analysis exceeds the scope of this forum.

bridge385 will need to seek out an attorney licensed to practice in his own area for a personal review.