Employers & IP

Johnboy1951

I have been wondering recently about employers claiming IP rights to the output of employees, and how this works in practice, so thought to ask here to see if anyone has some 'real world' experience.

It seems that (some) employers claim rights to ALL output of employees during their employment term, regardless some of that output being generated outside of working hours, and unrelated to the employment.

So if I was employed as a software writer working on things like a competitor application to MS Office for instance, that any other software I produced in my spare time would be claimed by my employer.

It seems some of those contracts are so wide-ranging that if I was employed to write software and I wrote a novel in my spare time, my employer could claim rights to the novel.

What is the real world situation?

[I am not a software writer and not employed under such a contract, so this question is for my general information]

liamo

I'm not sure why this has been posted in the Unix forum. However, its location notwithstanding, it's an interesting question.

I suppose, like a lot of things, it depends.

For example, a photograph is copyright-able content. However, I don't expect my employer to have any claim to any photos I take, even if I take them during working hours. If, however, I took them as part of an assignment by my employer then that would be different.

I don't believe that an employer can unilaterally "claim" ownership of all employee output. Any employee would, I imagine, have to assign ownership via an employment contract. The scope of that assignment would depend on the contract.

Even without a clause in a contract the employer may have a claim on output that could be related to the employment. If the output was related to the employer's industry and it was generated on employer-owned equipment then I would have to think they'd have a strong case. However, IANAL.

From this document:
In Ireland, the Common Law principle is that the employer will own the product of the work of an employee in the course of employment.

Copyright and Related Rights Act 2000

• The act provides that the employer will be the first owner of any copyright in work made by an employee in the course of employment, subject to any agreement to the contrary.
• The act provides that the employer shall be regarded as the maker of any database made by an employee in the course of employment, subject to any agreement to the contrary.
• Software is defined as Literary Work for the purposes of this act.

This document pretty much agrees with the above document but goes further and discusses what "in the course of employment" might mean and gives some examples of case law.


Under Irish copyright, industrial designs and (less clearly) patent laws, is that any work made by an employee in the course of employment belongs to the employer, unless otherwise agreed.
Therefore, the two crucial factors in an employer/employee IP dispute are

1. whether the employee is in fact an employee; and
2. whether the works were done in the course of employment.

At least some employment contracts with my employer have a clause that assigns ownership of all software development to the employer during the time that the employee is employed by the employer. However, there has never been any attempt by the employer to claim any such ownership and I'm assuming that it is there as a safeguard.

Perhaps the solution is to read all contracts and have removed any clauses that are over-scoped. Alternatively, seek another employer. Alternatively, agree to the contract.

Johnboy1951

The reason I posted it here was I thought it might have a better chance of some real-world experience comments.
Maybe I was mistaken and should not have posted in this area.

From your link

As can be seen from the above, there is no guarantee that IP created by an employee at work will be deemed to have been done in the course of employment. For this reason it’s recommended that employment contracts cast a wide net when dealing with employee IP, to cover tasks not falling within the employee’s normal duties and work done outside of the office and working hours.

it seems that the advice to employers is to claim all work done by an employee regardless type of work or when generated.

It is that aspect that interested me.

liamo

Johnboy1951 wrote: »

it seems that the advice to employers is to claim all work done by an employee regardless type of work or when generated.

Yes, I suppose that in the effort to protect themselves employers may be over-scoping their claim to content. Hard to blame them really - they're protecting their interests. Conversely, an employee could request a clause to be added that specifically excludes certain projects, for example. Mostly I think it comes down to people reading and understanding what they're signing.

Manach

Most employer / employee relationships have a dispropriate balance of power. Especially so in terms of legal resources. That is why there are judicial doctrines to favour the weaker sides in contracts were it could be deemed unfair. Hence an encompassing term to harvest a persons IPR would likely not survive a challenge.

Johnboy1951

Manach wrote: »

Most employer / employee relationships have a dispropriate balance of power. Especially so in terms of legal resources. That is why there are judicial doctrines to favour the weaker sides in contracts were it could be deemed unfair. Hence an encompassing term to harvest a persons IPR would likely not survive a challenge.

The difficulty, as I see it, would be the cost of such a challenge, and the probable unequal experience of the afforded legal representatives.

Syth

Johnboy1951 wrote: »

The difficulty, as I see it, would be the cost of such a challenge, and the probable unequal experience of the afforded legal representatives.

Not only the cost of a challenge, but some people might not know that they can, or should, challenge that. Someone who's not very confidence, whose boss is a big aggressive, who's not used to resorting to the legal system, could easily be bullied into thinking that they have to give everything up.

I'm quite sure that many organisations with such "company owns everything" clause put that in so that they can possibly bully people, even if it's not valid.

syklops

I worked for a company which asked me to list anything I had invented or was working on prior to becoming employed with them, and in my contract was a clause stating that anything I invent while working for them either on company time or at home would be owned by them. Suffice it to say I didnt as much as doodle in my ideas notebook for the whole time I was there.

Somewhat ironically, it was a company that could really have benefited from employees being innovative. Some of their systems and processes hadnt changed in over 10 years, and the area they were in was one where they should have been at the forefront of technology, not using software from the last century. So with their "we own your inventions" policy all they did was shoot themselves in the foot by stifling innovation.