Fog Creek Software
Discussion Board




Intellectual Property

Ok so, I've been laid off.  However I did some programming work at my former employer.  I used code from my toolbox that I had developed previously.  Since this wasn't produced for them I believe I still own it as intellectual property.  I don't have it trademarked or anything like that but I'd still like to send them a Cease and Desist letter to keep them from using my prior work.  Does anyone here have any pointers or experience doing anything like this?  BTW I'm in the US of A.

Greg Kellerman
Monday, January 12, 2004

Did you get their permission before using your previously developed work?

Unless you have documentation that you really had this other stuff developed previously, they would probably have a pretty good case to send you a "Cease and Desist" letter for using "their" IP.

I don't know about anybody else here, but I am pretty comfortable with the fact that anything I check into the VSS Repository at my workplace becomes their property even if I develpoed it at home. (But unless what I developed at home was the bulk of my companies application I owuld still keep using it at home as well).

Chris Ormerod
Monday, January 12, 2004

Seek advice from a lawyer who specializes in IP.

If you're employed to develop software, ownership is determined by your employment contract, which generally gives it to the employer. Determining who owns the work tends to get a bit murky in the absence of a written contract. Even if you develop the work on your own time at home on your own computer, your employer might still own the result, or possibly the right to use the result royalty-free.

One Programmer's Opinion
Monday, January 12, 2004

If you're in the US, it does NOT become their property when you check it in. If you developed it BEFORE working for them and they do not have an explicit license from you to use it, then they are in violation of copyright. Negotiating a reasonable licensing fee would be the thing to do at this point.

Make sure you can prove you had already written it when you walked in there. Ideally you would have had them sign an acknowlegdement of prior works and inventions when you started working there. In fact, such an acknowledgement is something that every single programmer without exception should have management sign when taking on any position as an employee and not a contractor.

Dennis Atkins
Monday, January 12, 2004

OPO, this is a case where it is code he developed BEFORE working for them, thus any contract or not regarding work done during his time there doesn't cover it.

Dennis Atkins
Monday, January 12, 2004

My guess is that unless you had them sign an explicit licensing agreement, you're screwed. 

Crimson
Monday, January 12, 2004

If you created the code before you started working for the company, then you own the copyright to that particular code.  (Of course you'd have to prove in court that you actually created it before you started your employment.)

However, your former employer has some pretty good arguments that even though you own the code, it has the right to keep using it.  For example, it could argue that you gave the company implied permission (an "implied license") to keep using the code, or that you acted in bad faith ("equitable estoppel") by intermixing your code with the company's code base and then withdrawing permission to use it.

You might want to read the court opinion from a recent similar case, Carson v. Dynergy.  [1]  There, an employee allowed his employer to use an Excel spreadsheet that he created, but then sent a cease-and-decist order to the company after he was terminated.  The court ruled against him on an "equitable estoppel" basis.

The bottom line is that if you want to pursue this, it could be some very messy (and expensive) litigation, and you would need to contact an intellectual property attorney.  On the other hand, it might be better just to put this behind you and move on.  (This is not legal advice.)

[1] http://www.ca5.uscourts.gov/opinions/pub/02/02-41279-cv0.pdf

Robert Jacobson
Monday, January 12, 2004

My gut reaction is on the company's side in this case. Your employer paid you to write some code. Your implementation combines your homebuilt tools with code written on company time. Without your toolkit, the code isn't usable. It seems that the company is entitled to the toolkit, to justify the salary they paid you.

It must suck being laid off, but I don't see your justification.

Julian
Monday, January 12, 2004

Unless the project your ex-company has is small and they are willing to drop it, or removing the code in question is a small job, you are screwed. They will just bury you in legal costs until you relent or lose. Are you willing to spend 20k+ to fight this? If not, dont bother.

Craig
Monday, January 12, 2004

I am with the employer.

I mean they are your tools. But you have used them at work, you must have forseen a time when you would no longer work for them, did you envision taking back the tools when you retired? Or was it your intention to hold them to ransom? I think you are probably upset and being a bit spiteful. They are your tools, but you took them to work, forget about them, you still have a copy at home.

I have never understood the 'I am employed therefore anything I write while employed belongs to my employer', if you design something at home, then it is yours I figure. Heck I would nearly border on saying if you wrote a rival program while working on the same program you should still have every write to it.
I say nearly, I haven't fully explored it all (ie I haven't entered into, observed an engaging debate on the subject yet, enough to see fully all sides of the argument).

Aussie Chick
Monday, January 12, 2004

Aussie Chick,

Being in Australia (and Sydney?) as I am, you are most likely subject to a similar employment contract as mine - it basically says anything I write for my employer at work or at *home* (did your boss really tell you to work at home on it?) belongs to my employer, but anything I write  for myself (i.e. completely unrelated to my employment) either at home or at work belongs to me - even if I decide to use a part of it in their application (I just have to accept the fact that if I were to leave I couldn't take that with me).

It also says I can't develop an application with overly similar functional goals to my employers application (i.e. a rival), but I can use all the skill and theories I develop at work to develop my own application that does something different. For example if I learn all I can about the Data layer of my employers application and go home and write a data layer for my own application based on the same concept that is fine as long as my application doesn't compete with my employers.

The reason you can't write a rival application is simple, if you know all your employers plans for the next year or 2 and then go home and develop an application that follows those plans in order to compete with them then they would have a fairly good chance at winning a court case to stop you selling/giving away your application.

One thing it probably also says is that I can't work with a competitor, but that is not really that enforceable because every software consulting firm in australia is a oompetitor when you write business software.

Chris Ormerod
Monday, January 12, 2004

>The reason you can't write a rival application is simple, if you know all your employers plans for the next year or 2 and then go home and develop an application that follows those plans in order to compete with them then they would have a fairly good chance at winning a court case to stop you selling/giving away your application.

This is one of the reasons I used the term 'nearly', that is, I definitely think there are no nos and I would agree the above is one of them (ie I agree with the employer)

Aussie Chick
Monday, January 12, 2004

"I used code from my toolbox...I'd still like to send them a Cease and Desist letter"

What the heck did you have in your toolbox, full-blown applications?

Let this be a lesson -- never work for free, which is essentially what you did by giving them any code you developed previously.

They may have screwed you but you also shot yourself in the foot.

Steve
Monday, January 12, 2004

This is plain silly. You may prove that you own the code but you won't get the product pulled or any royalties. You might get an attribution or some copyright statement.

On the other hand, many employers might see your approach - which you have put in the public domain - as ill-considered or vindictive. They read these postings too you know.

Ian Sanders
Monday, January 12, 2004

Just move on.

Weren't you hired to produce code?  You did your job.  That you brought some of it in from your own collection is rather irrelevant.  You didn't offer it under a license, you just gave it to them.  (Did you even inform them?  Tell them you want it back when you leave?)  I bring in my own code all the time, and I suspect most good programmers do the same.  Shit, it beats writing the same thing over again thirty times, so I'll bet you did yourself a favor as much as you helped them.  I imagine you're feeling angry at being canned, but you'll do yourself no good by wasting your energy pursuing some revenge plot that will be ultimately fruitless.

veal
Monday, January 12, 2004

Thanks All.  It's pretty much what I thought.  It would be too expensive to pursue for the financial gain I would get.  Since I already have a new job lined up I'll let it go.  Next time I'll just reinvent the wheel.  They were cheap bastards anyway.  :-)

Greg Kellerman
Monday, January 12, 2004

Robert,

Thanks for posting that link. Boy, I love case law.

Seriously, I recommend case law to anyone to get their drama fix. Way better than soap operas, and even better than high art opera librettos. You've got all tehse characters and this stuff they are up to and you get an insightful summary and analysis of every side's best side of the story and then a final pronouncement in terms of an intricate puzzle of prior case law, common law, and existing statutes.

I tend to think anyone who is really good at programming, debugging, design work which includes digging up mysteries, putting together the untold story of undocumented API behavior and researching existing designs and api behavior, would find working in IP law to be pretty much the exact same thing.

That's probably the field for out of work programmers to get into. The financial rewards are great and talented people are in great demand.

Dennis Atkins
Monday, January 12, 2004

Sweep your sour grapes under the rung and move on.

pb
Monday, January 12, 2004

I looked into patent law. the rewards are about the same as being a contract programmer until you reach partner. 

http://www.infirmation.com/shared/search/payscale-compare.tcl?city=New%20York&usps_abbrev=NY&base_per_hour_p=t


However, given the past two projects I've worked on, being a patent clerk might actually be more intellectually stimulating.


Monday, January 12, 2004

My solution, no idea if it would hold up in court, is to BSD my code and put it on sourceforge (http://elibs.sourceforce.net)

It seems like in this case everyone wins.

The employeer wins because

*) There's no licensing issues (BSD not GPL)
*) There's no money required
*) I'm get my job done faster not having to rewrite stuff

I win because:

*) My job is eaiser
*) If I make minor mods to the source they don't become property of the company
*) I can still use them at the next company
*) My friends from other companies can fix or add features as well

Of course this only works for things I really started while working for myself.  I wouldn't take some product, write 3 lines of code at home, then bring it into work to write the rest and try to claim later that it is all open source.

As a game programmer, I do wish I had the time, money and motivation to make a good game engine and tools and BSD it so when I moved somewhere else I could use it instead of having to re-write it all again but that's not likely to happen.

Gregg Tavares
Wednesday, January 14, 2004

I do almost the same.

Except my code is LGPLd. This code (my toolbox) and the expertise I bring with it is part of the 'value' that I bring to a company. This way I also get patches to it from my fellow developers and still get patches when I go on to the next project.

It's a win-win situation. Company gets product faster to market, my toolbox (and the value I bring to the next company) grows larger.

Tal Rotbart
Wednesday, January 14, 2004

They paid you for your labor. Unless you have a contract with them stating otherwise, all code you wrote or contributed to their project is considered "work for hire", under common law.

You might want to Google that phrase for the legal definition of "work for hire".

What this also means is, unless you have a contract stating otherwise, all code contributed, whether written during the contract or previously, now belongs to your former patron.

Justin
Wednesday, January 14, 2004

>Unless you have a contract with them stating otherwise, all code you wrote or contributed to their project is considered "work for hire", under common law.<

Actually the "work for hire" doctrine only applies to code he wrote while he was employed (not preexisting material that he brought with him.)  The employer owns the copyright to the final product, except for those portions of preexisting code.

http://cobrands.business.findlaw.com/intellectual_property/nolo/faq/BABFA71E-97C9-479F-8A9D4C3DB2498663.html

The bottom line, though, is that the OP would have a difficult time enforcing his copyright in court.

Robert Jacobson
Wednesday, January 14, 2004

*  Recent Topics

*  Fog Creek Home