Employer stealing my 4 year old side project | Hacker News Reader

Employer stealing my 4 year old side project

10 pointsminton10 comments

I've been working on a side project for nearly four years now. About a year ago I signed an employment contract with my new employer. This contract contained that standard clause stating whatever I work on belongs to them even if I work outside normal business hours.

My employer said he's cool with me working on side projects and that he has no problem with it. However, I do not have this in writing. I thought this was good enough until...

Recently another co-worker, Tom, was laid off and my employer brought up the book Tom had written and said technically it belonged to him. This scared me enough to realize I need to get something in writing and fast.

That leads me to the question on what exactly should I have him sign? Do I really need to get a lawyer to draft this or can I put something together myself?

View on HN

>My employer said he's cool with me working on side projects and that he has no problem with it.

He could be cool and having no problem with your side job, and still claim ownership of it.

You should check your IP laws in your country. I'm in France but IP principle must be common to many countries.

As soon as you create something, you are the author and you own the IP. Your employer can only claim ownership if the creation was made during an explicit (written) mission to do so, by contract or if the creation was made by using "means" of the company (e.g. PC, data, time,...). The burden of proof is then on your employer, not you.

You can retain partial ownership if you can prove that only part of the product were made in the condition yielding ownership to your employer.

Remember that it is the employer that has to justify his claim of ownership, assuming you are the author and this is not contested. If such physical proofs would by accident disappear, then your employer could have a hard time to claim any ownership. But keep in mind the perfect "crime" doesn't exist. He might have copy of your stuff, witnesses, mails referring to the creation, etc.

The best would be that he never heard of your side project in the first place and that you never used any means (e.g. PC, data, storage, time,...) of the company to create and work on your stuff.

Now you know why it was 'Ok' for him that you worked on your side project. Don't waste your time with written things. Get your stuff away of him, if it is still possible. You will be in a much better position to negotiate if this should happen.

In the US, you also need to look at state laws. In at least Illinois, there are limits on what an employer can claim ownership of, no matter what the contract says.

Go back to the employment agreement you signed, read it. There likely is a "notify us about outside stuff" language in it.

If your project is closely related to your job or business your company is in, you have problems. If it's likely or is worth a lot, you have problems. If you've EVER used company assets to work on the idea you have problems.

What you need your boss to sign is a simple letter that states work related to the fields of XYZ is not a part of your job and (there likely is some contract language from your contract) not claimed by the employeer. If the idea has value, I'd spend a few hundred dollars going to a lawyer.

I'm meeting with my lawyer tomorrow to discuss being proactive about my current project which I started after I left my previous employeer, but I want to play defense now when it is cheap vs. later when it may be expense and time may be short.

If you're ever going to go ask for VC or Angel money this likely is something they'll catch durring the process and then you'll have to go back to deal with it when the costs are higher and time is short.

If you happen to work for a really big company the HR department might actually be able to help you, but talk with a lawyer first.

Disclosure: IANAL.

Adding to John's message above:

>> Go back to the employment agreement you signed, read it.

Not just read it but make sure to read it very carefully. There are terms frequently used in such contracts that look like normal English (or other language) words but may have very well-defined and specific legal meaning. Examples would include "work", "inventions", "work for hire", etc. Generally you can find definitions of these online, including in Wikipedia, and also sometimes in the contract itself.

The contracts also often have a place for "excepted works / inventions" where you can write things that you would want to exclude from the contract. Be careful again of the precise contract though as:

1. The exceptions are generally intended for work you did "prior" to employment by the company. Anything you do after joining may not be covered in this form.

2. As John noted, you may still have a requirement to disclose any excepted work you do within prescribed time limits to the employer.

3. You may have non-compete clauses which prevent you from working on things related to the employers line (or anticipated line) of business. This bears another example where people often misinterpret -- They claim for example that their side project is on end-consumer software application while the company products are enterprise related [Hint: Do not go by your or normal language definition of "related". As far as legal world is concerned, "software" may be just one category. A good check, though probably not correct, would be to see which line of businesses the employer's trademarks are registered for.]

To summarize:

1. As John said, better to discuss with a lawyer.

2. Even with '1' above, go read a book or two. E.g.: "www.amazon.com/Intellectual-Property-Open-Source-Protecting/dp/0596517963/"

3. Do not blindly fill the excepted works/inventions form. It by itself may not save you. You may need a separate agreement in writing stating something like "Employer has no interest in your side project and does not mind you working on it on the sides". Make sure also that your side project is well defined in this new contract -- My guess is that over including or under including would not be good ideas.

4. There have been previous discussions on HN. I would have found some for you but need to rush right now.

Disclosure: IANAL.

my employer brought up the book Tom had written and said technically it belonged to him

I'm assuming this was stored on a company-provided computer?

IANAL but to be clean you should impose a firewall between employer-provided equipment and your project. Do your coding or book writing on your own computer.

Legal issues aside, it makes it harder for them to get their paws on it. And if you're fired you've still got access to it.

Open source it.

He can only do that if he has clear legal title to it --- and the issue here is precisely that he's signed a contract which may give the employer first dibs to appropriate it.

(Beyond that, things get into murky "consult a lawyer" territory very quickly --- the precise language of the contract may make a real difference. And so may questions of jurisdiction; California law is more employee-friendly than elsewhere in the US, but you can't necessarily take that to the bank without checking the contract and the circumstances.

Things get a whole lot easier if you can get the employer to sign papers which formally waive their claim on whatever-it-is --- but ideally, you'd consult a lawyer on the wording of the waiver. I've got one for my own open-source side projects, but it hasn't been legally vetted for third-party use, so I'm a bit reluctant to share it...)

Open source it now, before the employer tries to stake a claim, and the employer will have a hell of a time trying to rein it in.

But I agree, getting your employer to sign something is the best bet. Even getting it in an email is better than just verbally.

Don't open source it without the employer's OK or disclaimer-of-copyright-interest. You don't want to be sued for disclosing trade secrets (which, if they claim the application, could very well be what they consider it). While they would have a tough time reining it in, that doesn't mean they won't take it out on you.

Reply on news.ycombinator.com