Ask HN: My company wants my side project. What can I do?
Hello everyone,
I created product on the side as a side project in my own time and it has become a huge hit in the community to a point where my employers wants me to transfer the code-base over. The company does OSS and my side-project is also Open-Source.
I've developed it on my own time but the product directly relates to what my employer does so I've sort of cornered myself in a bad place. In hindsight, I also made some mistakes in how I went about evangelizing it.
Ideally, I want to keep the ownership with myself but I doubt that is going to work out.
I think what I want is: - to be compensated in some form for all the time I've put in over the last two years - to have control over the product roadmap (this I'm fairly confident won't happen in the way I want in the long run)
What are my options here?
What should I ask for here? I don't have much clue as to what can I ask for here so any suggestions would be helpful. People at my company generally wants to work things out to keep everyone happy to some degree. Find a lawyer, ASAP, that specializes in employment and / or IP. This is a legal issue and you need to solve it with people that know the law. Talking, signing, admitting things, etc, only hurt you. Depending on your country and state, as well as your employment agreement, there are a lot of impactful variables. Intuition and personal relationships are not going to help you solve this issue, especially, absent knowing the law and your position. Listen to this person. The people telling you to talk to your employer are giving you terrible advice. You can still do that after spending 30 minutes with a lawyer, but you can't take back anything you say before you talk to a lawyer. Always always always talk to a lawyer. If your dog walker (at the peak of their career) friend was like “I need a website” you wouldn’t be like “learn JavaScript” you would say find a programmer. If I had 10 dollars for every time I had to spend weeks convincing an engineer friend to talk to an attorney and then when they finally did it got dealt with in 30 minutes... Lawyers are just “full stack law architects” do your self a favor I find kneejerk advice to consult lawyers for anything that concerns the law frustrating for two reasons: 1. It never seems to be accompanied with advice on how to find the appropriate kind of lawyer.
2. It almost always seems to ignore the fact that lawyers are expensive. Sure, there are times when that cost is warranted, but I don't think it is right to ignore it. For example, in this case, it is probably only worth consulting a lawyer if the amount of compensation on the line is significantly more than the amount the OP would pay the lawyer. And what if the person you are advising can't afford a lawyer? Also, concerning your metaphor, I would not just immediately say "find a programmer". I would find out what kind of website they wanted, then depending on their technical skills and what they wanted (and how close a friend they are) I might teach them how to make a website themselves, or point them toward more user-friendly tools to create websites. I'd only suggest they hire a web designer if they needed something really complicated or didn't have the skill or time to learn how to make a website themselves. If you have a medical problem, you go to a doctor. If you have a legal problem, you go to a lawyer. If you can't afford a lawyer you might as well roll over right now because that will be the end game. The idea that some advice given in an online forum would reduce the need for finding a lawyer is akin to taking medical advice from a forum. You have no idea what the qualifications/experience/jurisdictions are of the people giving you advice so it might be good/neutral/detrimental. Get a lawyer, one that specializes in IP and if possible to find those skills in one person as well as in employment law in your place of residence. In the US maybe. In the UK, most of my lawyer friends would tell you that lawyering up is the last course of action you want to take, as it tends to make issues more complicated, expensive and combative, though you might want to be careful what you admit / agree to. My wifes a solicitor. :) There's a huge difference between going to litigation and just asking a lawyer what your legal position is (which needn't take too long or be too expensive) so you know the rough shape of what your 'worst case' looks like. Most businesses are reasonable and willing to do what's 'fair' even if that goes beyond what they might be legally required to do because employee goodwill is worth a lot to them and the cost to them of litigation is also high. But they will also have an idea of what their legal position is and that will inform their idea of what 'fair' is. A good lawyer will tell you what they'd expect you to be able to negotiate commercially and tell you to try that first. Your employer doesn't even need to know you consulted a lawyer. I agree with all that, the question is whether or not you want to get your way or roll over. If you want to roll over you can do so without consulting anybody, if you want to get your way you will need to figure out what your options are going forward and that will include talking to a lawyer. Roll over isn't the only alternative to lawyer. OP could always just say "no" and see what happens. Maybe lawyers come in to play eventually, maybe they don't. See that's why you talk to a lawyer first. They could let you know what the possible forks of 'see what happens' are. There might be angles there that are detrimental to the OP and it would be good to be aware of those up front before doing things that can't be undone, such as saying 'no'. The reaction to "no" can be multiple: * OP is in the wrong and employer can't afford to pursue further. OP loses a lot of reputation as word spreads. * OP is in the wrong and employer can't afford to pursue now. Five years down the line, when Oracle acquires employer, OP is sued for five years of damages. * OP is in the right, but employer's lawyer crafts a very intimidating and compelling legal letter. OP backs down, having blown the relationship with the lawyer, loses rights, and is fired two months later. It's helpful to be able to say "no" with conviction if one is right, or not press an issue if one is wrong. It's not "lawyering up" but understanding the options available to you, your rights in the situation, and the potential consequences of all of it. You never even have to tell anyone that you spoke to an attorney. > lawyering up is the last course of action you want to take, as it tends to make issues more complicated, expensive and combative Not sure if the incentives are the same in the UK, but in the US, most lawyers retained in matters like this work for the client. In that lawyers advise, the client decides, and then the lawyers attempt to realize the goal the client has chosen (if they decide to keep working for them). Most people in the US seem to look at legal counsel as "Do what the lawyer says," when it's actually "listen to what the lawyer says, ask about alternatives, and then choose the course you want to take." Or as I've heard it explained: a lawyer's default is to counsel the courses of action that will allow them to win a hypothetical jury trial two years from now. When in reality, most things never get there, and some optimal courses of action for trial are antagonistic in a pre-trial context. Lawyering up is different than having a lawyer explain what the law says to you. I mean you're right, but just stating your position usually actually makes this sort of stuff go away before anyone involves a lawyer, regardless of what the law (or precedence, as tends to be more important in the UK) suggests. For the record, I've used solicitors before and it was a ball-ache. The first thing they tell you is the judges want you to have at least made an attempt at discourse before you can go to court. > In the UK, most of my lawyer friends would tell you that lawyering up is the last course of action you want to take, as it tends to make issues more complicated, expensive and combative, though you might want to be careful what you admit / agree to. In the UK you're entitled to 1 hour of free legal aid, so it's hardly expensive to consult with one who can direct you to the right person and place. That really depends on how you define "lawyering up" - I'm not saying he should hire a lawyer and run all communications with his company through the lawyer moving forward. I'm just saying have a conversation with someone who understands the legal issues at hand here, then make an educated decision on how to proceed. He can always still have a friendly negotiation with his company after talking to a lawyer. > ...is akin to taking medical advice from a forum. Listening to doctors instead of carefully reading forums would have probably left me seriously crippled. Doctors hold no real liability, nor do they have any real expertise outside their (very narrow) problem domain. There is no substitute for doing your own research if you want something done right. I'm sure there is an exception to every rule. As for doctors not having real expertise outside their (very narrow) problem domain: that's precisely why you want to see them if your problem is in that narrow domain. This has been my experience over the last two years. When things get limited to a preset problem that doesn't fit the reality. The system has no mechanism in place when things go outside of the norm or expected. Finding expert doctors and relaying updated information to family doctors doesn't work too well either. And yet, if your arm was broken, I bet you'd see a doctor. An IP disagreement with an employer is an acute, not a chronic condition. When you don't have years to acquire the knowledge yourself, you go talk to someone who already has. > If you have a medical problem, you go to a doctor. No, if I have a medical problem _that is serious enough that it is worth the cost_ I go to a doctor. I don't go to the doctor for every cold or headache I get. Granted the OP is actually a case that might be worth that cost, but I've seen similar advice for much smaller things. I mean, I've asked questions about IP for my hobby open source projects, from which I don't expect to ever get a penny, and been told to get a lawyer. Or in this case, say compensation was off the table, is keeping ownership of the project worth hundreds or thousands of dollars for consulting a lawyer? Maybe. Only the OP would know that. And even after consulting a lawyer it's hardly a sure thing. I'm not saying you should take legal advice from forums. My problem is with the "Always always always talk to a lawyer." Maybe you have enough money to talk to a lawyer every time you have a legal question and see a doctor every time you have any kind of malady, but not everyone does. And I guess part of my complaint is just that such an important service is so expensive. It leads to a situation where the well off can hire lawyers to consult them on things like employment contracts, but those with less money can't, which makes it easier to exploit them. So we should take advice to get a lawyer from a forum, but not take advice not to get a lawyer from a forum? No, you should take the advice to get a lawyer from a forum, not to take the legal advice from a forum. It's sometimes okay to get legal advice from a forum, but in this context, someone needs to review: 1) The employment agreement
2) Understand the degree to which the specific project overlaps with the employer's business
3) Etc. That takes a conversation you don't want to have online. But yes, I definitely to seek legal advice from forums, Nolo books, and similar. Self-serve law is not a bad idea in most cases, despite advice to the contrary. Just not in THIS case. If this isn't a situation to consult a lawyer on, then I don't know what is. He needs an IP lawyer with notions of employment law of the jurisdiction he's in. If a company wants to formally acquire the rights to the IP.. it's safe to say it's worth something. Having gone through this myself, I agree with #1, it’s sometimes hard to find the right lawyer. But I guess that means start looking now. Your #2 reason is tricky because individuals who need the advice to seek out a lawyer already don’t understand the value of having a lawyer, so they have no way to gauge the financial cost of hiring one. That makes a lawyer seem very expensive, when in reality sometimes the risk of not having one is much greater than the cost. A few years ago I had a side project I wanted to turn into a company, but not enough money to do it full time. So I applied for a job. The employment contract they wanted me to sign had a non-compete that was vague enough that my side project would be in conflict with my job. I was very worried about spending $2k to hire a lawyer to write an exclusion clause into my employment contract. It seemed like a lot of money to me. But I did it, and for the money I got a single paragraph of text that excluded my company from ever being considered “competition”. (Actually the real value was not the text, it was that my employer knew the text was written by an employment lawyer, so they accepted it and didn’t push back.) Later I left that job to start my own company, and then sold it a few years after that. Without the clause, I could have risked the entire thing. In retrospect, it was some of the best money I ever spent, worth every penny. The problem is the programmer thing just isn't comparable - knowing a little bit about the law isn't like knowing a little bit about web development. No one who is not a lawyer has the ability to get qualified to handle legal issues within the time frame they would need to for a legal issue at hand. Beyond that, with legal issues, you can't take back your mistakes - if you get armchair legal advice and it turns out to be bad, you've probably irreparably harmed your prospects in the negotiation/case. If you mess up web development, it's not a big deal. The cost argument is a fair one, and I think that's worth considering. In this case, though, OP has indicated that this is a project that he feels has some amount of value, so it's worth spending $300-500 for a consultation with a lawyer. I'd try to look at it from an expected value perspective - even if paying $500 only has a small chance of improving the outcome of your negotiation/case, if the value of the thing you're negotiating over is $25000, it's worth spending. If the value of the thing is $600, then don't bother. In terms of finding a lawyer, upcounsel.com, avvo.com or referrals from friends are good places to go. You have no reason to trust me, as a random person on the Internet, but for this sort of issue (IP+employment law), this is an ideal lawyer: https://www.lawson-weitzen.com/attorney/bauer He gave me terrific advice on a similar issue many years back, and I've gone to him a few times since. I've never retained him: our conversations were always about knowing how to interpret employment contracts, understanding options, and coming up with a negotiation strategy. After those consults, I could go it myself. A good lawyer won't drag you into litigation. Good lawyers are rare, but the goal should always be to appear professional and to preserve relationships. If you have the rights to your code, you should be able to maintain them without burning relationships with your job. If you don't, you should hand the rights over without a fight (or negotiate for rights, but understanding you'll need to compromise something in return). In either case, you'd like to keep working there, you'd like good references later, and you'd like your employer to stay in your network. You can't do that unless you understand your legal rights, and unless you have an idea of what tactics you should take. A good lawyer will run you $300-$600 for a conversation (1-2 hours). A bad lawyer will escalate to a conflict, and run you tens or hundreds of thousands of dollars. Keep in mind law varies by jurisdiction. I don't know where OP is, so this recommendation may be moot. I've worked with many lawyers. I have no conflict-of-interest (my relationship with Bauer is limited to a small number of ~1-hour consults). The difference is if you try to make a website yourself and you screw it up you're out a few hours and maybe a few tens of dollars at most. There's also very little you can do wrong that can't be fixed or undone later. If you screw up your legal diy the consequences are much much worse, and often unfixable. So basically in that example you are the lawyer consulting your dog walking friend. Sounds like solid advice to me. If a lawyer is too expensive then just read up on your local law. https://en.wikipedia.org/wiki/Work_for_hire You don’t need javascript to build a website. You don’t need a doctor to solve every health problem. And you don’t need a lawyer to resolve every conflict between people. Eg. Where would the internet be if only programmers built websites? Given some responses to this I will happily clarify. If you are in the united states the state you live in will have a state bar website where you can find attorneys in your area that specialize in different types of law. A number of people here have talked about the idea of talking to an IP lawyer. I think in this case I would recommend talking to an employment attorney. Most attorneys will give you an initial consult for free and then tell you what it would cost to move forward. Have used George Grellas (longtime HN poster) for things like this in the past and been very happy: http://grellas.com/ Seconded, I've referred lots of people to George over the years and never heard a single complaint. Thanks, bookmarked. Blindly going to a lawyer can also be a bad advice. From my experience it opens a huge can of worms: first the situation may switch to a full on conflict for years. Your lawyer is incentivized to make you angry and fight to death, open other fronts etc... Another aspect some people might not understand too especially in low litigation countries is that "legal" and "fair" are different concepts. Reserve this kind of misery for when the outcome is actually life defining for you. Your lawyer is incentivized to do what you describe but if they are a good lawyer the won't do that. They will show you possible options of going forward and put you in a decision to decide. The tricky part is probably finding such a good lawyer and coming up with the money to pay them. Edit: to add to you second point: If "legal" and "fair" are so different, that's exactly why you can't rely on your intuition but need to consult an expert. > Find a lawyer, ASAP, that specializes in employment and / or IP. This is a legal issue and you need to solve it with people that know the law. Talking, signing, admitting things, etc, only hurt you. This. Anything you say. Anything at all. Can. And will be used against you in a court of law. Your job wants your code. Personally I would lawyer up and start applying for new jobs elsewhere and ensure they wont pull the same. Just never work on code from their hardware on their resources (internet, power, etc). Exactly this. And when you sit down with the lawyer, make sure to bring your employment contract and IP agreement. They'll need those to give you any informed opinions. Thank you for the comment!
I totally get what you and other threads are trying to say and I don't disagree with what you are saying. I probably should have cleared this out in my original post (my bad) that I do not wish to pursue the legal route. I personally feel that in my case, it will just drain everyone's energy for not much gain at the end. Also, personal relationships matter to me as well. I'm trying to find ways to get compensated for the time and effort I've put into it.
If not financially, then in some other forms. But I don't have any ideas. You don't go to the lawyer to sue your employer. You go there to understand your legal position. This gives you leverage in negotiations. The way you use that leverage is then explain why you feel something is not fair. In a professional context, you can explain your position in legal terms when you take a compassionate, kind stance, smile and analytically explain the situation from both sides. It's no more different than handling a code review. Now, two things can happen: Either your employer is amazed that you both created a new product AND can navigate business negotiations. This is good for your career (unless your employer is an idiot). Note that creating a new product that people love increases your market worth tremendously (unless you are already at a fairly well compensated level). Traditionally the simplest way to compensate employees has been to give them a raise. Hint - you could ask this :) The funny thing a higher pay grade does is that suddenly management will respect you more (we pay him x dollars so he must be awesome). Or, the second case: you find out your employers 'mr. Niceguy' culture is actually a charade to fool people working at below market rates. At which point the fate of your sideproject totally depends on the legal feedback you received. And it would be better for you to find a better employer. There are really good books on negotiation and influence. I suggest you read them when you have the time. Examples: Cialdini, 'Influence'. Voss, 'Never split the difference'. I wholeheartedly agree with your comment. The core is that OP created something of value, in his own time. So there should be a value exchange of some sort. Depends entirely on the employment agreement. Many will automatically assign ownership of any code written to the employer. Which, depending on case law in a particular jurisdiction, may or may not actually be enforceable. This is exactly why you would want to talk to a lawyer: they can tell you if you have a leg to stand on. The employer might be under the impression that all the terms in the employment contract they pulled off FreeLegalTemplates.net are enforceable when they aren't. Going to a lawyer first gives you the ammunition to politely point out that you are in fact the one in the right here. Which is insane, and should be illegal in a variety of different ways. Well true, depends on circumstances and how OP and employer relate and if they can find a win-win for both. See it as an opportunity. Unless he’s a salary employee. In that case, he’s technically always on the clock or could be argued to be so. If you want your time to yourself then stay an hourly employee. IANAL, but it's definitely not that simple. I've worked in salaried positions and still retained ownership of my side projects. There was also one instance where I refused to sign a NCA that threatened my IP, so YMMV. A salaried position is usually for X hours per month though. An employer that can make you work 24/7 each day of the month is not an employer, they're an owner. This is excellent advice In that case, have you considered getting a lawyer just for the advice and not telling anyone about it? A lawyer you hire won't go around making threats without your permission, and they can at a minimum tell you if your plan has a massive flaw you've overlooked. The best way to not "go the legal route" is to find out what is legally open to you and what is not, and then negotiate from confidence rather than ignorance. Failing to do legal homework up front is actually an easy way to accidentally end up in court. You are not understanding. You do not only talk to lawyers to sue people. Lawyers are the only people here who know the law and are on your side. You should not be asking HN what your options are: you should be asking your lawyer what your options are. And your lawyer, not the company's lawyer. If you really want a to have a part of the product that you created you need to know your options/rights. If you don't want to spend money on lawyers, at least read all relevant laws (which is important even if you have lawyer around you). It's also better if your company doesn't know about your preparation, as it can be used as defence weapon in the negotiations only if you would get a worse position than what you have rights for anyways. Preparing in secret also helps you get more evidence for your case. It's worth noting that your employer will probably have already spoken to a lawyer about this, or will be prepared to if you don't comply with their request. A 30 minute session with a lawyer will give you much more insight in to how to deal with this situation more than what you can learn from an internet forum. You still need legal advice, even if you do not wish to pursue the legal route because your position and its strength need to be established. If you don't want to do even that then my advice to you would be to hand over the code, fork it, leave this employer and call it a day. You really should consult with an IP lawyer, for all the reasons mentioned here. You may have to reset your expectations about walking away with both compensation AND control. You will have to reset all of your expectations, regardless of their combinations. OP has made some strategical errors already and it now depends on the exact writing of his employment contract and the jurisdiction they are in what options are still on the table. Unless your employer is foolish (unlikely) they have definitely talked to a lawyer about this already. You should do so as well, to be on the same footing. This lets you negotiate with confidence, you'll understand your BATNA and the terms of your contract with the business. This, a million times this. We can't even begin to think about the answers to this question with knowing what state the employer and/or poster are in. Nor can we begin to think about it without the specifics of the application and the field that the employer develops in. The ultimate conclusion of this will ultimately boil down to minutiae. Minutiae that we are neither privy to nor have the knowledge or experience to reasonably discuss. Yup. He needs someone who understands the law and the specifics, and who has his interests in mind. This is the correct answer. It is the only answer. Unless not in the US, in which case suddenly turning up with a lawyer might be like bringing a gun to an amicable discussion. Parent said nothing about "turning up with a lawyer". You can get legal advice from a lawyer without just going in guns blazing. But this is the obvious answer. OP didn't need you to tell him to get a lawyer. If he had that kind of money he'd be talking to a lawyer not us. I mean I know you meant well and I know I probably sound like a negative jerk but yeah of course it's a legal issue and he should talk to a lawyer. It's like if someone has a stomach ache and they asked online what it might be and someone tells them they should see a doctor. It's obvious and doesn't need to be said. I think what OP needs are good resources so that he can educate himself as much as possible. Yeah he also needs a lawyer, if this is that important to him, but being informed will be a force multiplier here. in my experience people are generally shity when you ask for legal advice online but you could try that. For example stack exchange has one but you'll probably get condemned on there instead of getting helpful advice. An out-of-the-box idea might be to find a paralegal on FIVERR and ask them to dig up resources to read up on. Again I apologize for being such a jerk about your suggestion. I'm a terrible person. I disagree. Learning the ins and outs of the law and of IP negotiations - a very specialized and cut-throat field - in a few days or maybe weeks is out of the question. If he can't talk to a lawyer, he's going to lose. Period. Maybe very badly. After having already screwed up, now is not the time to half-ass it. You're not a terrible person but you've given absolutely terrible advice. At what point did I tell OP to become an expert on IP law? Nowhere. My advice to OP was to educate himself so that no matter what he did he could be more effective. > You're not a terrible person but you've given absolutely terrible advice You didn't read my advice correctly and I place zero value in your opinion about me being a good person or not especially considering you thought you had enough information to even bring up the topic based on one short internet comment. Now you're nitpicking. Sure, he can educate himself and should. But in the amount of time he has (can't be much) he can learn basically nothing. It's too late for that path to make any sense. As for the other thing, looks like you're intentionally picking a fight. Therefore, out of deference to your better logic, I withdraw my comment that you are not a bad person. > If he had that kind of money he'd be talking to a lawyer not us. He, and you, may not know that you do not always need money up front to engage the services of a lawyer. Many lawyers extend credit to their clients or allow clients to condition their fee on a successful outcome (a contingent fee). Depending on the desired outcome in this case, such an arrangement may be easy. For example, if OP wants to arrange a sale of the IP to his employer, then the lawyer’s fee could be paid from the proceeds. Some lawyers also take credit cards. Also, an initial consultation to decide if OP wants to hire a lawyer shouldn’t cost anything. OP won’t get any free advice, but he should get an idea of how a lawyer could help in his situation. I always had the impression that programmers and developers should be well enough paid to afford some first legal consulting. (1) Few good lawyers in this space give free initial consults. (2) Contingency isn't all too helpful unless you definitely go for litigation. OP definitely shouldn't go for litigation here. My point is you don't need to say obvious things. It's a waste of everyone's time. Given the amount of pushback on that in this thread from you and plenty of others it does not seem that it is all that obvious. The obvious is not always obvious to everyone. Isn't it a waste of time trying to control the obvious? Not only are you wrong, but you're being dramatic and deflecting criticism. People being "shitty" when you ask for legal advice online or not is a complete red herring because it is an inappropriate and dangerous substitution. Fiverr? Are you kidding? You can get a fairly cheap half hour consultation of some kind with many a good lawyer for a few hundred dollars AT MOST and it will not be a waste of time. There's only one right answer here. Your answer is dangerous and your attitude is flippant. You need to seriously rethink both, or you're going to get yourself or someone else in hot water someday. It's pretty clear that you're in read-only mode. You think you know the only answer so what can I tell you. I've had a lot of conversations about this lately, but my tolerance for this kind of ignorance ends where the possible damage begins. You are directly leading someone down a dangerous course and playing with fire. Feel free to make that choice for yourself if you really want to, but don't expect to give this poor advice to others in a public forum without a reality check. It isn't necessarily obvious, and if the question is being asked, it needs to be said. > An out-of-the-box idea might be to find a paralegal on FIVERR and ask them to dig up resources to read up on. Ideas are a picodollar a dozen. Why don't you try this one and tell us how it works out? Or, at a minimum, find out if you could even theoretically hire a paralegal on Fiverr? Seems like it'd be a pretty bad idea on the paralegal's part to take the gig. Why is that? It is illegal in every US jurisdiction I’m aware of for a paralegal to give legal advice. Attorneys have a legally enforced monopoly on legal advice because, well, they write the laws. And even if you found a paralegal willing to break the law, you'd either get an idiot who can't get a job anywhere or have to pay a lot more than $5 Surprised that no one has mentioned that you should first review the employment doc you signed. In many (most) cases any IP you create does belong to them. Getting a lawyer involved may just turn in to an expensive and antagonistic experience that winds up with you simply ending up....with them owning the IP. One thing to consider- spin off your side project and try to get your employer as your first customer or as the exclusive distributor. But your employment contract should have an IP provision, and that is going to be 99% of any outcome. it does look like an open/shut case. and without knowing full details this would also be my first reaction. But IMO it's still worth talking to (2 or 3) lawyers which specialize on the subject[1]. It gets expensive only if you decide to fight - and you don't need to make that decision just yet. Just asking a legal expert to review your case isn't going to be outrageously expensive, but gives you a better understanding for deciding if this is worth any risks. And it would give you also a clear picture about how to protect yourself for any future ideas. [1] I have a rule which served me well. Interview (review) any legal adviser, accountant or consultant that you might want a professional relationship with. After talking to several people you know exactly the questions to ask them to decide if they are a good match for you. Also ask them for client references and a sample invoice they have issued for similar cases. Do these discussions always in person (over a coffee) never online. The first consultation has always been free for me (idk how it is in the US though). Agreed/good post. It never hurts to talk to a lawyer. And a good lawyer is one who will tell you the truth, which is sometimes you dont have a left to stand on. Another thing good lawyers generally tell their clients is not to litigate and try to work things out. This seems like a great example where there seems to be goodwill on both sides and appeals to fairness and decency and reasonableness might be far more effective than belligerence. I recommend all of the above even if you do have the law on your side -- life is short and memories are long. > In many (most) cases any IP you create does belong to them I've heard this many times before but what are the limits to this? Say you work at software company x and on the weekends at home you are coding a project completely unrelated to work, a dating app, a mobile game, whatever. How can any contract be all encompassing as to legally allow that? It doesn't. IANAL but I'm pretty sure that no matter what the contract says an employer's claim on work that an employee does on her own time and with her own equipment and unrelated to the company's IP is not "obviously" something that will stand up in court. I don't know if there is relevant case law but this seems like the kind of claim that is likely to be invalidated in court. Of course at least one and possibly more of those three things are not true for the OP, so that may be a different situation. These things all depend on the country and state/province in which you are employed. Whenever this topic comes up on HN, all these armchair lawyers come out of the woodwork and start making blanket statements about what they are "pretty sure" is allowed, but this issue is dependent on what's in your contract, and what your national and/or local laws allow companies to claim. "Talk to a lawyer" is the best answer to something like this. totally agree with the above, but I'd like to point out that any contract is an agreement between two parties. If the two parties involved decide to change that agreement amicably, that's fine. Court battles are the last resort, not the first move. So even if the legal opinion is that you don't have a leg to stand on, you could still get everything you want if your employer agrees to it. I would try to negotiate from that stance, instead of a legal one. So "yes, boss, I understand that contractually the IP is yours, but the community is mine, and the goodwill is mine, and the IP is worth nothing without those, because the community will just fork the code. So let's talk about how this is going to work..." > "Talk to a lawyer" is the best answer to something like this Agreed. That's probably the best advice for any non-trivial legal issue or question. I hope no one read my answer as contradicting that. That said, is there _any_ example, in _any_ jurisdiction where a court has upheld an employer's right to IP that meets those three criteria (employee's own time, own equipment and unrelated to the employers business)? I would hate to be in position where I'd need to find out, but I'm curious if this has _ever_ been tested in court. It just seems like a ridiculously over-reaching claim. In one discussion, I think with my own lawyer when reviewing a proposed employment contract, I was advised that it is best to be quite specific about what is covered with these IP clauses precisely because how enforceable they are can ultimately come down to the unpredictable opinion of a court where the people making the decision might not be technical experts. It was a long time ago, so I may be slightly misremembering the exact details, but in a nutshell the example given was someone who did have to hand something over because a court decided that being a salaried programmer using a certain programming language at work meant something they programmed in that same language at home was related to their employment. The software itself was in a totally different field to what they did for work, so their assumption had been that it wouldn't be covered, but the court didn't see it that way. I'm in England and was talking to an English lawyer about English employment, so I assume that was also the location of the case mentioned, but I'm afraid I don't know anything more specific to provide a proper citation. I was also warned that this is a bigger problem for employees of huge companies with many divisions, because in that case the employer could have interests in a wide variety of different fields that would be relevant for contractual purposes. Even though any given employee might have no knowledge that something they're doing out-of-hours could be affected, because it's nothing to do with what they do themselves and what happens in their own part of the business, it can still be relevant from the employer's point of view and so trigger the contractual transfer of IP rights. > court has upheld an employer's right to IP that meets those three criteria (employee's own time, own equipment and unrelated to the employers business) Yes. There are places where either by statute or by the employment contract, anything the employee creates belongs to the employer. The underlying concept is that the employer created an environment where the employee was able to learn and be inspired. I know personally of a situation where a university exercised this right, although I don't know if they did it through statutes, common law, or an explicit agreement. If you (or anyone reading this) can link to any examples of or details about this sort of thing I'd be interested in seeing it. Don't get me wrong - I believe you - I'm just curious about it and would like to learn more. The example I know about wasn't a newsworthy thing, just something that happened to my ex's classmate. I think the sticking point was that the IP was in the field he was getting his degree in, even though it wasn't related to any of his research (or any of the other research at the school). I tried to Google for some other examples, but (as usual) Google mangled my search into a completely unrelated topic. This seems just crazy, is there really an example of this? Does this also mean that if a programmer will write a song at weekend, his employer will have the copyright? Because I see no difference. > Does this also mean that if a programmer will write a song at weekend, his employer will have the copyright? The example I knew about was something that could plausibly have been done using the university's resources, but it wasn't. While it does seem crazy, a common legal practice is to create incredibly rigid, selfish policies and then decide later if it's worth enforcing them. I was often told as an undergrad that anything I did was partly owned by my school, but that I shouldn't worry about it because they'd never pursue me. > something that could plausibly have been done using the university's resources Yeah, but parent here states that even if an employee wasn't using any employer's resources, the rights are still belong to the latter. Which is a whole other level of insanity. On an unrelated note, university owning any work of a student, regardless on how it was done (unless it was explicitly contracted with the uni), is also pretty grim, but this is probably US thing. University's owning research is a major funding mechanism, and it's how they justify paying graduate researchers. There are limits to how much the university can profit from the IP, and the student researchers still get to profit too. Such clauses would get immediately thrown out. even if it's explicitly stated in the contract and the employee has agreed to it? Why would it get thrown out? There are things that you can't contract away. An obvious example in the U.S. is that even if you have a contract saying you have to work for someone for no pay, forever, with no possibility of getting out the contract, it would be unenforceable because we, as a nation, have decided that slavery should not be legal. It turns out, many of these un-contractable issues involve the employer/employee relationship... another example: even if you sign a contract saying your employer doesn't have to pay you overtime, that provision would be thrown out if you challenged it, and would probably get the employer in trouble with various agencies, including the IRS. I am a lawyer, but I don't have experience in this field, and this is not legal advice (you have to hire me for that), but this issue seems like one that a court (depending on the state, no doubt) would find that it doesn't matter what the contract says, an employer can't own everything an employee does. To emphasize: this is NOT legal advice, don't rely on it, and you really should seek counsel if you are encountering this issue in real life. Sure, plenty of stuff is unenforceable in contracts. Is there any evidence that this particular sort of extremely common clause is in that set? The fact that the employer/employee relationship is so carefully controlled (specifically to limit the power the employer wields over the employee outside employment) is what makes me suspect that at least some jurisdictions would decline to enforce an employment contract provision that gave the employer ownership over all IP the employee produces, even if the IP is produced off-hours, without use of the employer's equipment, and not having any relationship to the employer's business. Again, I don't actually know for sure - I'm not an expert in this area of law. But I think there is enough evidence in the rest of (U.S.) employment law jurisprudence to indicate that it's not open-and-shut in favor of the employer. At issue is he says that what he created is within the realm/market of his employer. That would be akin to an Intel engineer saying "I designed another microchip for computers but I promise I was doing this for me and not for Intel so its mine." You cant do some work on specific sector A for your employer and then do some other work in specific sector A on your own and now expect the employer to ask, justifiably, "who decided the dividing line here?" My apologies, I was responding to the question about why a court would find an employment contract provision unenforceable - we don't know what the OP's employment contract states (or if he even has one), so I was treating this whole line of inquiry as separate from the OP's situation. Didn't mean to confuse the issues. Some states (don't know in USA, speaking from EU) have laws against "unfair clauses" which make those automatically null even if you accept it. Usally the point is that for each clause in a contract which put an obligation on the employee, the employer must "give something back" to repay for that obligation in equal terms. In this case in my state the employer should at least have paid for all the time out-of-work in which op worked on his IP, and with a rate established by op Contracts state a lot of things that don't necessarily hold up. It's just words on paper. Sometimes they're even tenable in one area, then used in another state which disallows some claim or another. Employment contracts in particular are subject to a lot of restrictions and protections regardless of what the employer makes people sign, because labor laws. Depends on where you are. In the EU, parts of contracts that sre against the law, which includes labor without payment, are invalid and you are free to sign it. In this case, giving up IP you made in your free time requires a new contract, because the law also requires a purchasing contract to have clear parameters https://www.urheberrecht-leipzig.de/urheberrecht-nutzungsrec... Please don't make comments like this, particularly in threads where OP is probably misunderstanding their legal situation and about to be extremely disappointed. It is absolutely routine for employment contracts for software developers to transfer the corresponding IP to the employer. It's the main asset the employee is being hired to create! It is common in fair and reasonable employment contracts for the standard for what is covered to be something like anything done on work time, using work resources, or related to work activities. The legalese varies from place to place, but if the employment contract includes wording like "in the course of your employment" then it probably means something along these lines, again depending on your local laws. Some employers do try to include much more wide-ranging grabs, potentially any IP created by a salaried employee during the period of their employment. I normally recommend against signing any contract that includes these, not least because it says something about what type of employer you're dealing with. It's true that the situation is less clear in this case, because in some jurisdictions such terms might be considered overly broad and so not stand up to challenge, but you really need a local lawyer to advise you about this because the rules vary widely from place to place. In any case, since OP has told us that the project in question is directly related to what they do at work, this aspect probably isn't relevant to today's discussion. OP, I'm sorry to be the bearer of bad news, but unless there are important details you've omitted or your employment contract is unusually liberal, you probably don't have much of a leg to stand on here. It's quite likely that your employer has actually owned all of the relevant IP from day one. That would probably mean you wouldn't be entitled to any sort of compensation for it. (This isn't to say that your employer might not offer something to maintain good will and keep you on-side, but that's a different matter.) More than that, it would potentially also mean you never had any legal right to open source it yourself, if the copyright was never yours so you never had any power to license it. That in turn could mean anyone redistributing it has been infringing your employer's copyright all along and the employer could even sue them. The employer could also take the whole project back closed source, or do anything else legal they want to do with it. (Again, this isn't to say they will actually do any of these things, but the employer being nicer than the worst case isn't a problem.) On top of all of that, if the project is in any way in competition with what you do at work, you may have violated other conditions of your employment, which as with so much of this stuff may end up changing nothing or could have quite profound implications. Short version: You do need a local lawyer who works in this field, right now. They will help you to understand your real situation, which no-one here can do properly. They may well advise you to simply hand everything over, and perhaps to seek some sort of written confirmation from the employer that they don't consider you to have violated any other aspects of your employment contract and the matter is then settled. If your employer is into open source and sees the value in the community you've built, you might get away with that. On the other hand, if they're sufficiently aware and litigious to go after your project in the first place, things could be much worse, and then you definitely want to have proper advice before you do or say anything else. Yeah, this is written into my non-compete. Going to renegotiate it when promoted. When your company wants your side project, you should be polite. Say "no thank you" > In many (most) cases any IP you create does belong to them. Why do Americans consider themselves free? Because they are free to choose to not work for a company that has such an IP clause in its employee contract. They are also free to negotiate a change to that clause. Theoretically. Not everyone has the liberty to change jobs at will and be fine. Ah yes, the choice of working or not working. I choose to live on the street and not pay my wages via tribute to usurers! I'm free! (no loitering). It can be the same thing in Europe, at least the contracts I've seen say so. Just because it's there in the contract doesn't mean it's legal. I'm not sure which European country you are referring to, but as a German I'd look at you funny if you had the audacity to put something like that in an employment contract (but honestly, I very strongly doubt any employer would do so in the first place). In the UK I've signed a few employment contracts with such clauses, that If I produce something outside of working hours the company still owns it. I signed the contracts anyway assuming that most likely the company would not be interested in what I created outside working hours (or even know of it) and that they would only get interested if it becamse really successful, in which case I would probably have the means to defend it. > Just because it's there in the contract doesn't mean it's legal. No, but should be likely that it is, right? Not worth the risk to put such clauses in there otherwise. And I was talking about the UK. This is rampant in Europe too. Some of us don’t. it's the same in UK, EU and Australian law. No it is not. In Germany, you need to make a new contract with explicit payment https://www.urheberrecht-leipzig.de/urheberrecht-nutzungsrec... my bad, I haven't checked Germany. I stand corrected. Just UK and Australia then. This comment is unnecessarily antagonistic. The government here doesn't intrude as much on private employment contracts as in Europe. Maybe as a result the salaries in the US are much higher and unemployment rate over time also much lower. > intrude as much on private employment Is the state 'intruding' when they preserve your other rights? and mortality is increasing again. geez, what a great country to live in! Freedom includes the freedom to make bad decisions. I'm somewhat surprised by how many people are focusing only on who owns the IP. You are now in a negotiation, and so "what can I ask for" is largely determined by "what is the BATNA,"[1] i.e. what happens if you and your company fail to reach a mutually acceptable compromise and start acting purely in your own respective self-interests. This will partly come down to legal issues (can the company take over the IP from you), but for an open source company, I would speculate that reputational issues from a "hostile takeover" of another OSS project could change the calculus substantially. If the company takes over the project by force, and you publicize the fact that they did this via the IP clause of your employment contract (which most developers regard as somewhat evil), that doesn't seem fun for their PR team. Even worse if you'd be able to fork the project. Of course, this depends a lot on the details of your situation, so you should definitely find someone to talk through the details with who is good at negotiating. Just not sure if a lawyer is the best/only person to talk to. [1]: https://en.wikipedia.org/wiki/Best_alternative_to_a_negotiat... Whether or not your employer can claim ownership in court depends entirely on your contract. But no matter what's in your contact, that route is probably not your best option. From what I understand, you created, in your own time, a project that is valuable to your employer, and that they want to use and develop. You're the expert on this project. Not just that, you designed every aspect of it, popularised it, and your employer apparently likes it enough to want it. These are valuable skills. At the very least, this should imply a nice raise. Perhaps a promotion. You're the natural PO and the natural lead developer for this project. I would discuss this with your employer. See if they're willing to give you a nice promotion with this project as your primary responsibility and an accompanying raise. Maybe a bonus too. > Whether or not your employer can claim ownership in court depends entirely on your contract. Entirely this. I got burned by this years ago, developing side project that was completely unrelated to the sort of work my employer did, and was not developed using any company resources. But my employment contract specified that my employer had first rights to anything I developed at all during the term of my employment. From that time on, whenever I'm negotiating a new employment contract, I make sure that any such clause is omitted from it. I've never had an employer completely balk at that, although some have negotiated a middle ground where they get first rights to a time-limited exclusive license to any side project I do that does overlap with their activities. This sort of thing is why I advise people to actually read and understand employment (and all other) contracts before signing, and to not be shy about requesting changes to them if the terms aren't acceptable. Also, don't listen to verbal assurances like "that's just boilerplate, we never actually enforce that". That may or may not be true at the moment, but there's no guarantee it will remain true over time. When the rubber meets the road, what the contract says is what will happen. I went further and negotiated copyright ownership of all open source code I produce for my employer: https://lists.sfconservancy.org/pipermail/contractpatch/2018... Software Freedom Conservancy reminded me that everything is negotiable: It's been a while since I was at a company that had that clause in it, but if I was in that situation in the future then at the minimum I'd want to ensure that I could still work on open source projects on my own. I was wondering what is the best way to phrase this with a potential employer (esp. if you are out of work, and desperately need that job)? I was thinking along the lines of "Hey, I periodically do volunteer work for various charities, and I think this clause could hurt them. Could we add in that work not directly assigned to me and is related to a non-profit / charity is excluded from this clause?" That way, if anything comes up, you could turn over copyright to the FSF or similar organization and you would be covered. Asking about something in a weird indirect way is worse on all counts. Just ask directly if open source contribution is encouraged or allowed. If it isn't, and you still want to work there anyway, no company that's remotely decent is going to rescind an offer just because you asked about something. In my opinion, it's better to ensure that you have the right to do whatever you want, and reap the benefits of that, if what you're doing does not compete with your employer. That way, you're covered with OSS projects as well as any others. > time-limited exclusive license to any side project I do that does overlap with their activities Thank you for your answer. Could you please elaborate on this one? What does the exclusive license entails? Do you get ownership back when the time expires? I never relinquish ownership -- that's nonnegotiable for me. The concession I'm talking about here is that the contract specifies that I retain ownership and copyright, but I commit to offering my employer the option to exclusively license it from me for a limited period of time. What the limit should be is open for negotiation, although I prefer that the limit isn't specified in the employment contract, but that it gets negotiated should the employer actually want the license. When the exclusive period is up, that doesn't mean the license is inoperative, only that I am free to license it to others as well. Note that when I say "I" here, I really mean my attorney. These sorts of things can be tricky, and I am no lawyer. Also, it's very hard to make this sort of thing foolproof -- if an employer wants to screw me, there are a few ways that they could. What state were you in? > I got burned by this years ago, developing side project that was completely unrelated to the sort of work my employer did, and was not developed using any company resources. But my employment contract specified that my employer had first rights to anything I developed at all during the term of my employment. Seriously? Did you not read the contract? Most contracts specifically say that the work has to be RELATED to whatever you're doing at your day job. Blanket "we own everything" statements should never be accepted, ever. > Blanket "we own everything" statements should never be accepted, ever. That's a value judgment that others might not share. Also, that's easy to say if you have a steady, secure job that pays well. But if you don't, and you need a job else you might not make your next rent payment, maybe you can't be so picky. Same deal if all the desirable jobs in your area have clauses like that and you can't or don't want to move. > if you don't, and you need a job else you might not make your next rent payment, maybe you can't be so picky. Yes. Early in my career, I had been in this situation a couple of times. What I did then (and would do again) is to suspend any work on such private projects entirely until I can find a job with a more reasonable employer. sometimes clauses are implicit in the law or collective contracts or come from case law so on the contract you sign you don't have to specify it, contracts are still bound by law and law takes precedence most of the time and ultimately you have to read the whole thing to know what a contract actually bounds you to in it's entirety, which is way you resolve disputes you need a specialist Italy for example has a blanket "we own everything" statement on the standard collective contract, and to work around that you need to write an agreement and sign it on the side (not on the main contract) or it won't stick in court because all clause against the collective contract are considered vexatious by default and require special care Law and court decisions trump contract. California, for example, does not allow contracts for ownerships of things done on your own time, your own equipment and not related to your employer. Thank you for your comments! This would have been natural but the timing of this could not be worse. I just got a raise (last week) and I doubt they will consider anything more. They gave me a raise because I was doing good work for other things. I've serious doubts that there would be any financial barter possible. I'll probably the lead for the project and my managers are fine with that. Promotion is something that I've considered either so thank you for that suggestion. An alternative is to sell them IP. Whether they're interested in that is another thing, but if your employment contract doesn't contain relevant clauses that automatically transfer IP ownership to your employer, it also doesn't seem like a bad solution to the problem. There are other forms of compensation, such as more vacation time, company-sponsored attendance (ie. membership, travel, and lodging) at industry events, a continuing education budget, a private office, higher company matching funds for your 401k, etc. Think "perks" rather than "salary". looks like you've outgrown your workplace. Wrong about contracts.
What matters is law and precedent.
Contracts may be entirely unenforceable. Seek legal advice from professionals. >developed it on my own time but the product directly relates to what my employer does As much as I hate to say it, that doesn't sound like a side project. That just sounds like overtime. Couple that with the point that; In hindsight, I also made some mistakes in how I went about evangelizing it. It sounds like the author implied the company actually had something to do with whatever it is. That definitely makes it an unsanctioned overtime project rather than something separate like a side project. > That definitely makes it an unsanctioned overtime project rather than something separate like a side project. Is it overtime if you were never paid for it? How does unpaid work have to be 'sanctioned'? I don't think it really applies to the side-project rights case, but there's reasons to control overtime and require permission for it: Trying to ensure lower management/peer/customer pressure don't cause people to overwork themselves, if people work more on additional projects they're not asked to do they might be less effective at the main work, in some places (probably not the US) it's a legal risk. My employer in Germany has such rules, although I'm not sure how strictly they're enforced. >Is it overtime if you were never paid for it? Sadly, for programmers in the US, overtime is essentially always unpaid. When you e.g. hear about game developers doing 80hr/week crunch time, they're not getting paid extra for that. I get that, but 'unsanctioned overtime' sounds as if the company was robbed of something. Since they never paid for that 'overtime', how did it need to be sanctioned? Going that route, maybe the company could pay for the work done on the project. Yes, that is how I see it as well. If the company really want to act in good faith, as reading between the line I assume you believe they do, they would have opened with an offer or some sort of compensation. Instead they flat out asking you to transfer your work over means they knew and has already calculated the consequences. Sorry to be cynical, as others have point out go and talk to a lawyer. Indeed, this realization is hitting me slowly. My number 1 rule when it comes to side projects is to never create something closely related to my employer's business. As an employee, if you put a lot of your business and technical knowledge (that was acquired while on the job) on a large side project effort without your employer's consent, you're playing with fire, because you may be transferring business advantage from your employer to the outside world, including the competition. You put yourself in a position where you could even get sued if things go badly (specially if your project is a potential money maker)... See the case of the Nginx author, who just got himself into similar trouble... In conclusion, I think your safest bet is to, as everyone is saying, talk to a lawyer... not to threaten the company, but to protect yourself and hopefully come to a friendly agreement at the end! Could you please link an article that talks about what happened with the Nginx author? Plenty of articles. Search for "nginx office raid". It sounds like the company wants to work with you to work out a good solution. How have they responded when you told them: * I'd like to keep roadmap control * I'd like to be compensated for the work I put in on my own time out side of work. (which is well documented from the commit logs, and the fact I wasn't using an employer owned computer) * I'd like to keep working on this on my own time outside of work. If you are worried about long-long term, i.e. the time that exists after you leave the company, with the right software licensing strategy it's likely you could fork the project down the road and retain roadmap control of at least a fork of the main project. You may want to consider working with your company's lawyers to choose a license (you can re-license open source software -- https://opensource.stackexchange.com/questions/33/how-can-a-...) or figure out if the Apache license meets your needs. Short term it sounds like the outcome is pretty clear, long term seems like you have a lot of options. > I'd like to be compensated for the work I put in on my own time out side of work. (which is well documented from the commit logs, and the fact I wasn't using an employer owned computer) The company overall is quite stingy and I doubt that they will do this part. I'm trying to figure out what other things that I can ask for other than financial compensation. Someone mentioned Promotion and a positive review is something to ask for, which makes some sense. The only problem is according to my review, I'm already exceeding expectations. So, this project doesn't buy me much. Overall, they are fine, and kind of, want me to drive the project, essentially because there is no one else who can do that job. From what I can tell, it's not a very big company, so they should be flexible. So I would try to turn the tables around and get a non-exclusive deal like this: * The company agrees to pay you for adding some extra features to the project * You keep control and exclusive rights, but give them a license to use it (but not transfer it to others) Edit: even if they legally can claim full ownership of the project, you have the full right to resign and go work on something else after they do so. And if this is not what they want, you will have pretty good chances negotiating a non-exclusive deal instead. One last piece of advice: === DO NOT AGREE TO ANYTHING WITHOUT A LAWYER === Many companies would consider it business as usual to agree on your terms verbally and then slip in a clause in the contract that would completely change the balance in their favor. IANAL and I'm sure this will get downvoted since people won't like what I have to say. I'd concentrate on the positive rather than the negative, that if you get to work on this project via your employer from this point on you'll be getting paid to do the thing you were doing for free. Getting paid for past work seems unlikely. You already admitted you didn't care about compensation by open sourcing the project. You were willing to give it to anyone, including your own company as open source. Not that you can't ask, maybe they'll be nice about it, but just saying it's strange that before they asked you were giving it away for free to any company and now that they asked you want compensation. To be harsh you arguably did something wrong by making something that directly competes with your employer. It doesn't matter that it was on your own time. It's called a "Duty of Loyalty" and basically means you can't get paid as an employee and at the same time stab them in the back by competing with them. https://www.google.com/search?q=duty%20of%20loyalty%20employ... Maybe you don't think it competes but you said yourself it directly relates to what they do so yes, as you admitted, you've cornered yourself in a bad place. Some companies, like Google, have an easy way to get a signed contract saying they will not claim interest in your project before you start (or they'll point out it's a conflict of interest like if you said you wanted to make a cloud based mail service ... in which case my guess is they would try to get you to join the gmail team, contribute to it, or you could quit and start your cloud based emails start up). The point is they are upfront about the legal issues and provide a way to work out a solution. Most companies don't have a procedure for this until it's too late. Well, for Google it's not that ideal. Google claims 100% of the IP done inside and outside of your work. "As part of your employment agreement, Google most likely owns intellectual property (IP) you create while at the company. Because Google’s business interests are so wide and varied, this likely applies to any personal project you have. That includes new development on personal projects you created prior to employment at Google. However, we understand and sympathize with the desire to explore and ship technology projects outside of Google." If that's in the Google employment agreement, I salute them for using plain understandable wording, so one can agree or not. instead of EULA-ish doublespeak. I have this concern too that by putting something out there without permission as an employee you may have done harm to the company. You need a lawyer. You may also want to consider hiring a coach to help you develop a voice within the corporate setting so that you can better influence the direction of products without having to build an alternative in your precious spare time. And if the company doesn’t currently have policies like described above maybe this example can be used to help shape them with your input. Can you please elaborate on “coach to help you develop a voice within the corporate setting”? What are these coaches called? Can you link to an example? It sounds like to me that rather than interact with his colleagues to ensure their enterprise product was built incorporating the approaches he took in his package, he just went a built his package in isolation and then pushed it to github. Was that because the organization was ignoring his input, or he wasn’t in the right position to influence the direction or maybe he saw an unserved niche that the company wasn’t serving. or maybe it was just a drive to do something that needed to be explored. Either way, something got created. And that’s good. You never want to stifle creation sometimes that drive to create outside of work helps exercise part of the brain that helps you break through hurdles at work. Whatever got produced was a gift. The question is now what to do with that gift? I get the sense that OP is searching for how exactly to communicate with his company. The advice to seek counsel is sound. But counsel isn’t going to all of a sudden make him a great strategic-thinking leader in the eyes of his employer. That is something that will take work and practice if that’s what he is seeking. He can read books, he can take classes or he can find a business coach that will give him critical feedback and mentoring. In the past senior members of the organization might mentor junior people into leadership positions but I think unfortunately that art has been lost. So probably the best path would be to find someone who can do this 1:1 outside the org. Just a point to consider: how long would it take you to recreate this work? My guess, not nearly as long as it took the first time. 90+% of the time in coding, is figuring out the problem space in greater detail. Much of the rest is figuring out the best architecture to fit that problem space. Very little is typing and getting the syntax right. If you have to abandon what you've done, leave, and recreate a new version, would not take you two years. Two months? Less? Not saying this is what you should do, just that you consider what it would entail, if you handed the company your side project and then left to go re-create it from scratch, with all the lessons learned from the first time. Send this letter to your manager and your manager's manager. [Manager Names] My time at [Company Name] has been a great experience. It has been a pleasure working with you. As you may know I created [ Open source project ] on [Date] and have enjoyed growing the product and user base. Building and supporting successful products is something I enjoy and will be looking for opportunities to do that outside of my current role. [Day 2 weeks from now] will be my last day at [Company] Best of Luck Then you can negotiate from a place of power. Don't say anything about your plans other than that you are going to pursue other opportunities. At a minimum they will make you a counter offer, something like 10% pay increase and a new title of "Product Director". It is up to you if you want to negotiate something different like back pay or if you want to try to create a new product from scratch on your own or if you want to find another job. This advice is absurd. OP: My employer wants IP I've created. I want to negotiate compensation for it. Your advice: Start by sending them a resignation letter. Negotiations are all about relationships and starting by triggering others fears of abandonment is not the way to collaborate to a mutually beneficial option. I would suggest that the OP asks the if the employer would be open to discussing what he wants "given the additional value I'd be providing the company, I'm wondering if we could discuss my compensation and control over the project and any interests you may have?", and seek legal advice if he's not confident asking. It's important that the as initial ask is not phrased as anything extortionary ("give me x or I will/won't do x") as that kind of talk is more likely to trigger legal concerns. In that case the employer is going to hear " I want more money because I think you owe it to me". It is very easy for the employer to respond with "We don't feel the same way because X,Y and Z reasons or we cannot afford to pay you for the work you did for free". Negotiations are about leverage. Having a good relationship with someone is great. But they are not going to give you a big chunk of money because the like you. They are going to give you a big chunk of money because they need to you stay on when you are on your way out the door. Right, and that's where the negotiation begins. You'll be able to find a better outcome once you know what X, Y and Z are. Leverage in itself assumes that one party has to lose. But there are also negotatied outcomes where both parties are better off. For what it's worth, I'm an employer and although my employees have IP agreements I'd want them to feel real good if the business wanted their side project. In some EU countries that resignation letter wouldn't be legally accepted, given the required notice period. On the other hand, it is usually not legal for the employer to have any right over what employees do on their free time, provided no resources from the company (phone, laptop,...) have been used. This won't mitigate the claim the company has on the IP, unfortunately. Even if there was agreement from the beginning that this is the company's IP, and you have to transfer control over it, remember you are under no obligation to continue to do what you are doing. If you were to stop now, no one else is going to support and maintain the code-case. You have two other options:
1. You can stop immediately. Just say you are no longer maintaining and supporting it for free. You can work on it on company time. If anyone wants to pay you for your personal time to work on fixes and bug-fixes they wan, they can, at which point you can do that work, and release it as either part of the open-source project you have, or as a private fork for that customer. 2. You can quit your job. Go work somewhere else who is willing to work on your own open-source projects on your own time and maintain IP. Then, abandon the project since it no longer belongs to you. Your current company is the copyright owner. Start a fork, which will now be yours, and you're the copyright owner of any new code, including changes you made to the old code. If the original license is permissive, you are under no obligate to contribute back. Having said all of that, this is not what I would personally do. I would be happy that the company I work on wants my work so bad that they're asking for the transfer of ownership back to them. I would tell them that shouldn't be a problem but you'd like something for it, such as being able to work on it on company time, etc. Otherwise it sounds like they just want to own this thing you created and have you continue to work on it for free on your own time indefinitely, which I don't believe is what they're asking for -- you weren't clear about that. I would suggest you first think about what you want (financial, recognition, etc.) and then have a conversation with the company about it. As you point out, the company has an incentive to keep you happy! So, start with a discussion here. I personally believe that going to a lawyer at this stage is 1) expensive and 2) unnecessarily confrontational. I understand the argument about understanding your legal options, but at the point where you start to rely on the law, you're entering a contentious negotiation which can be unpleasant and expensive for everyone. So I'd just say "Hey, Employer, I've put in a lot of my personal time into this project. So I think it's fair that if you want it that I should be recognized in a concrete tangible way since clearly you want it because it adds more value to the business." And I think depending on the kind of company you work for, I'd ask for additional equity in the company (since you'd be making the company more valuable) plus additional cash (because you were working on this project night-and-day) and some sort of recognition would all be reasonable asks. Yes! Get a clear picture of what you want from this. Know your own mind before you enter into serious conversations with the company. Best case, you both win. > I created product on the side as a side project in my own time and it has become a huge hit in the community to a point where my employers wants me to transfer the code-base over. The company does OSS and my side-project is also Open-Source. Let me restate this: You had an idea you were so interested in you created it in your off time. You made it open source. Your company likes it so much they want to contribute to the codebase. You, being the leading expert in this software, are the one most likely to be tasked with working on this codebase. Beyond the obvious "OMG You're going to get paid to work on your pet project!" the concern being that they seem to want to control it. Compensation is probably not going to happen. IF it does then you are pretty much guaranteed they will own and control it. I would advise NOT seeking compensation, and instead saying "omg! I'm so glad you appreciate the work I've put into this open source project. When can I speak to folks about how the current development process of this project and how to submit pull requests?" Keep redirecting the conversation towards them contributing. If they ultimately say they need to control the codebase just tell them that if they're not ok with contributing to the project they can always fork it. They get the control they want and it's probably not worth suing you and against their best interest to fire you, because you're the leading expert in how it works. Side note: I'd switch the license to GPL ASAP. Not because I'm a huge GPL fan but because the GPL can be used as a weapon to prevent them from using it without contributing. Or, it is better at that than any other license. It sounds like you're the sole contributor, so that's probably legally sound. I'd also make some quick improvements that they would not want to forgo since it sounds like they already have the current version under the Apache license. It is not that they want me to spend work time on it. They want me to transfer ownership of the project to them. That's the part that I do not wish to do. The way things work at this place, I'll probably end up maintaining the product until I leave my job. The reason for not transferring over is that once I do that, they will essentially not let me create features that I think can be done better using my product, because they exist in some other product. So then the real question is who maintains creative control over the project. But if you're project lead for it , that would be you? It sounds like there's a lot of "politics" that you're unaware of or not mentioned. Is the project actually in competition with one of your company's products? If they're an open source company, how do they handle community governance and contributions? Do they normally make contributors sign over copyright, like the FSF? Why do you think there would be conflict over features? If you don’t want to, and won’t be fairly compensated for it, then how about using the word “No”? I agree with others that talking with one or more lawyers should be a high priority. Are you able to fork it? If so, there is then the issue of who gets to keep the name of the project. Also if you fork it, then now you will maintain two versions of the software (until you quit your job at that company), so that is another consideration. (It is also possible that the versions will not diverge right away, but might simply be a copy until there is some disagreement about what to do with it.) > they will essentially not let me create features that I think can be done better using my product, because they exist in some other product sounds like you created a competing product and made it open source. that spells trouble. Get a lawyer. IANAL If it's open source, you can transfer ownership to them, fork it, and continue working on your fork on your own time, adding whatever features you want. That would likely piss off your employer, though. Why not negotiate a VP or Product Manager position out of it and a nice pay rise, maybe even a share of the profits. Let them market it and take the risk, you become the man. I am not a lawyer, so this is merely a speculative guess: Currently, if they technically own the code, your open-sourcing it isn’t valid. You can put an Apache license in the repo, but you can’t legally give a license to others to use something you don’t actually own. So the code is not really open source until someone puts that license on it with company authority. It is just public. It sounds like this product competes with their other products. Even if they didn’t ask you to turn over control you would have problems working for them during the day, competing with them in the evening. Possibly liability even. If you want control, and want to use it to do things they don’t want, you probably have to leave the company. If you are going to leave, it seems you might turn over the repo to them to avoid legal trouble, and then be sure that someone else at the coming makes the open-source status official. Then you or others can fork it. But it seems you should only do further work on the fork if and after leaving. Again this should not be construed as real legal advice as I am not a lawyer. > But it seems you should only do further work on the fork if and after leaving. And only if the company open sources it.... Cant just be forking over proprietary code. It’s not really possible to give specific advice without knowing which jurisdiction you’re in. In most European countries there are laws that govern employee inventions and grant a share of the profits of an invention to the employee (in Germany e.g. the Mitarbeitererfindungsgesetz). Besides advising you to talk to a lawyer - which people already did here - there’s really little to say without knowing more details. If you can provide at least the country your employer is based in it might allow people to give more specific advice. Did you type out that entire German word without referring to Google? Native speakers can usually spell words in their own language. But really it's just a compound, just without any camel or snake case to indicate the word boundaries. Mitarbeiterer_findungs_gesetz : "employee invention law". Where Mitarbeiterer can be further broken into "mit arbeit -erer". Mit=with, arbeit=work, and -erer is a suffix also used in English for "person who does a thing". Small nitpick: it's more like:
Mit-Arbeit-er + Erfindungs + Gesetz. There's no -erer suffix, the first -er makes Arbeit + er (= work + er). Second one belongs to the word Erfindung (= invention) It's basically just three words without spaces:
Mitarbeiter-Erfindung(s)-Gesetz (employee-invention-law). The 's' is used to join the words. No dictionary needed :) If your project is OSS, what prevents them from taking it and "force you" (as an employee) to work on it anyway? Maybe a restrictive license may help: if your company takes the code and modify it, make them under the obligation of releasing the source code too. What is the current license of your project? Ultimately, nothing prevents you from deleting your public Git repo. You can decide that your project is not available anymore, it is your right. Deleting the code or putting a restrictive license in place doesn't change the terms of the employment contract if it has terms stating that they have IP to work done while working there. The current license is Apache 2.0 so that's not helping. > Ultimately, nothing prevents you from deleting your public Git repo. You can decide that your project is not available anymore, it is your right. I don't think this is an option. They can still claim that they want the code because I created something that directly relates to what the company does. If they have even a debatable claim on the code (probably not but are you 100% sure?), then deleting it is destroying their property. That's a quick way to have a miserable life (getting fired, sued, blacklisted among peers, etc). If it is a sude project that is related to your work I would say that is a good case for tge company (ianal though) At least you are using the know how you gained during your work It’s important to understand both why you want to retain ownership and why the company wants to have ownership. It’s entirely possible that there’s some arrangement that satisfies everyone’s needs. For example, you may be able to get them to agree that it will remain open-source in perpetuity and that your name remains prominently attached to it for as long as you feel comfortable with the project’s direction, but no longer. I’ll also second all of the suggestions to talk with a lawyer, not to go on the attack but to verify that whatever agreement you come to actually gives you the rights that you think it does— as you’ve discovered, small clauses in contracts can have big, unexpected effects. As many have said, IANAL but I’ll give my 2¢ as well. Your options are probably going to come down to your employment contract and where the company is based out of. Possibly even where you live. My non-lawyer understanding is that if you live in California and your company is based or the contract states that it is intended to be interpreted by California law then I’ve always operated under the following understanding: (Not a lawyer but...) I’ve been led to believe you are safe if you work on your own time, with your own resources and it does not directly relate to the employer. I think someone referred to this once as The California Clause. If that is the right name then I’d say the California clause is not going to protect your ownership on this case. However, maybe you aren’t in California? It is hard to imagine a state in the US that is more employee friendly so I would be surprised if you found your situation better elsewhere. Besides possibly another country? Even then I’d be surprised. Things tend to trend the other direction outside of California. That being said, many have told you to discuss with a lawyer. And some have even warned that it can cause unnecessary conflict if you do. They aren’t wrong but you can always talk to a lawyer just to see what they think your options are. If this is as much of a slam dunk case in favor of your employer as I assume it is, I like to think a good lawyer would be able to let you know. On the bright side, if your employer does take it over and they still allow it to be open source, that’s super great! Getting paid to do open source is a blessing. There are also so many benefits to being the creator of a valuable tool in your company. These things can often lead to promotions, bonuses and all kinds of personal fulfillment at work. If you do learn that you’re going to have to hand it over, find a way to spin it into a good thing. Don’t let it make you bitter. And next time you build something on the side, consider your employment contract and decide if you want to build something that doesn’t relate with your employer so you might have a better shot to align your desire to keep it. Try not to let this make you bitter. This could be a great thing whichever way it turns out. Since your project is open source, you should try to evaluate whether your employer could benefit financially from suing you to gain control of your open source project. If not, then they are less likely to do so. Also, you should factor in the PR/reputation cost to the company. If they're in the open source space anyway, it would be bad PR for them if they tried to suppress or discourage the independent open source work of their employees. Ultimately, as the creator, it's in the best interest of the open source project and society that it remain under your control. This assumes the employer is only motivated by money, but there may be big egos that would sink the ship just for the sake of enforcing the contract. May be delicate and ugly. If, as many have speculated, OP has signed a contract making this work the employer's property, then I would guess that it is not open source and never was - it would be like OP declaring the work he did in his day job as open source, and then making it public. It depends on whether the employee worked on it during company time, whether the employee was asked by the employer to work on it and how closely the work aligns with the employer's business. If companies could claim ownership over all their employees' personal open source work done during their private time, there would be no open source projects today. > It depends on... Yes, that was my point - it is not a certainty (and so any advice beginning "since your project is open source..." might be based on a misconception.) >...whether the employee worked on it during company time, whether the employee was asked by the employer to work on it and how closely the work aligns with the employer's business. It actually depends on the terms of OP's contract and whether the relevant clauses (if any) are enforcible in the appropriate jurisdiction. The factors you mention may be a factor in whether this is open source (and we already know, from OP, that it does align with the employer's business), but the "but if..." argument of your second paragraph is unlikely to carry much weight, legally. This is why OP should speak to a lawyer if she is dissatisfied with the employer's proposal. Looking at the Apache 2 license, it seems like they want to take ownership of your trademark and monetise it. Otherwise they would simply fork it and get on with making their changes. I would point them to the license and ask them what issues they have with it. Expecting you to simply give them control over your copyrighted work is outrageous, especially if you didn’t do it on company time. It’s probably best to get a lawyer to look at your employment contract if it’s unclear how far they think their control and ownership extend. What kind of outcome do you want? Most of the responses here concentrate on trying to get some kind of financial return for your work. That's important, but for you it might not be the most important thing (you were giving it away and working on it in your spare time, right?) Consider asking to make it your full time job, or something like that. You clearly know the field well, and you've managed to build community. Having the company resources behind you and the responsibility to run the project like you want might be an outcome that interests you. > What kind of outcome do you want? I wish I knew myself better. Maintenance and taking the product forward will naturally become part of my job, so that's a given (and I'm happy about it). What can I ask more for is what I'm trying to figure out and having a hard time. I'm generally creative with software and products but I'm really bad when it comes to negotiations and figuring out a good barter. I absolutely don't want to take the legal route and want to work something out mutually. Consider asking for a title that reflects that ("Open Source Product Director - your product name" or something) It doesn't cost them anything, and in the future if you leave it's surprisingly useful if that is a direction you want to go. I know you are getting a lot of advice saying "get a lawyer". That's up to you. > I'm really bad when it comes to negotiations and figuring out a good barter. > I absolutely don't want to take the legal route and want to work something out mutually. You know, a good lawyer is both good at listening to his client’s goals and good at negotiating. Such a lawyer would avoid a “scorched earth” outcome, if that’s what you want, and also negotiate a better deal than you could on your own. Lawyers who specialize in business transactions are sometimes called transactional lawyers (as opposed to litigators, who specialize in asserting claims in court). Many lawyers are very good at negotiating. It is part of the job, in many corporate deals idea is not to fuck the counter party but come up with everyone is sort of happy solution. If you are in Canada I can recommend someone who is good, former software engineer and does IP law. And both of you will be better off if that thing you work out is sound and in both your interest. Perhaps you’re both happy now, but what about next year? What about when you move to another company? Take the advice: consult with a lawyer. As a company owner, as soon as I read, "I've developed it on my own time but the product directly relates to what my employer does" > "Directly relates to what my employer does" You will face multiple charges. You have no IDEA - how brutal it can be in court.
In 99% case - You will fail mostly because - you built your company competitor while working in a company that is more likely to become your future competitor if court grants you your right. This will break 99.999% company of the world.
In many of the employee contracts - Some/Most of the Company has a clause that - you won't be working for the next 18 months or any X months in a company or product that is directly their competitor. My Suggestion as a company, "Be Polite to your BOSS and tell them every truth on why you built", "what provoked you building something like this outside of the company", "How would you like to see yourself in next 10 year". If your company is really "p* off", Max, they will do is, they will stop some future promotion and would most likely keep you away from most of their work, they will remain alert on your every step and would call a lawyer to inform you a certain thing, for which they don't have to bear the cost of fighting court case at the end, company saving money. ============= THINGS WOULD HAVE BEEN LITTLE DIFFERENT ######## If you would not have built anything related to what your employer does or what your company does. ########### Imagine you have company and you hired some employee. Now all or some or one of them has build something related to exactly what your company does, how would you handle? Do NOT talk to anyone at your company about this without legal counsel. Anything you try to do yourself will hurt you. Assume you do not understand the law or contracts, no matter how much you read up on it yourself. Talk to lawyer. You company did.. you are playing game where you are utterly clueless while the other side has a professional working for them. I would go for a friendly resolution, just say hey some of that was done on my free time it represents that much hours of work, I’m fine transferring it in exchange for $ to cover the extra work / equity if it’s a startup. Also negotiate some power if you can like having your own team to help you with it etc... everyone wins : you and your Corp You seem to have answered it to a point. They wanna make sure everyones happy and they like to contribute to open source. Tell them your concerns and what you actually want. Dont be afraid to be transparent. I would still review your contract and potentially call a lawyer just to see if theres any action whatsoever but it might not be necessary. Just be open about your wants and needs. Tell them you just want to be able to keep your project since you worked on it in your own time. Hell tell them you are okay exposing your codebase under their org. But get it in writing that you intend to keep rights to all code you write even if done at work. Allowing you to be paid to work on it for customers they nab. At the end of it its all your choice. Just negotiate terms that make you happy. Do not hold back concerns. Period. But be smart and ensure they have a legal footprint. Make sure to get copies of anything you sign. Dont agree to anything that isnt on paper. Worth talking to a lawyer. The specifics matter, and they'd be best able to guide you. This. Just my personal uneducated opinions below: Only a proper lawyer can help you, though you should do initial searches online to see wether you get an inkling of where you stand, and possibly reduce amount of time needed to spend on expensive lawyer. See if there are free legal councel near where you live, online or if anything can be covered by insurance. "I've developed it on my own time but the product directly relates to what my employer does" This is a bright huge red flag. Depending on the contract you signed, creating something in direct competition while employed can be grounds for assuming ownership. Using company resources, time, knowledge, clout, internal discussions and/or reputation, can be strong case for this company, against your position. Evidence and witnesses as well as your own words can be used against your position. If this IP was unrelated to company offerings, they would be less interested, and probably objectively strengthen your own case somewhat, depending on what they can prove and not. If you want to go very cheap, or avoid possible bill-hungry lawyers: Ask your boss wether they've cleared this with their internal lawyers and if you can get this confimed via a signed statement of company claims of ownership and exactly about what they claim ownership of and not. Always go internally through nearest boss or neutral intermediate in writing: Export the communications as well. Avoid contradicting your own claims unwittingly. If you get this letter and don't want to lawyer-up, I'm afraid your options are limited and you should do whatever necessary to avoid getting fired or sued. If they bluffed, you just called them on it, and can negotiate from there. Unfortunately, depending on the legal councel at this company and possible value of your work, your standing looks very weak, possibly damaging against you. This is why it's so vital to keep work and personal life divided. What may help in such situations is to do book-keeping of resources and hours spent separately for such side-project and document the process, while making sure Nothing from work is used. Like others have said: talk to a lawyer, find out your options, given your current contract (don't talk to your employer or make any decisions before fully understanding your rights and duties). One complementary advice: think that in the next 5 years you're likely to receive better offers than you currently have. How will your decision now influence your career plans later on? Try to imagine how it will be like to be yourself in future. Your future self will appreciate that you gave him serious consideration. "the product directly relates to what my employer does" Depending on your employment contract, this could be tricky for you. If your employer is nice about this and they want to encourage you, I would use this opportunity to negotiate something here which creates win-win for both. Clearly, they see a lot of value in this codebase so instead of turning this into a conflict, sell yourself to your employer. You can definitely ask for leadership control over it. Not sure if monetarily, you can get anything but worth a try. > I've developed it on my own time but the product directly relates to what my employer does so I've sort of cornered myself in a bad place. In hindsight, I also made some mistakes in how I went about evangelizing it. Your employer probably owns the code, but as its primary creator, you still have leverage. If your employer used standard employment agreements when you signed up with them, the product almost certainly belongs to your employer. This is especially the case if you used any employer-owned equipment to create it (laptops, networks, etc.). However, your employer probably knows that if they are aggressive, you will become unmotivated and drop any work on it, making it valueless and probably causing you to hate your job and quit. If they really value the product and you, they'll find a way to make the product and your career successful. You can ask them to give you a stake in its success, and officially bring it into the company. You can also ask them to give it back to you if they stop supporting it. If you consult with a lawyer, they can probably advise you on various frameworks on how to organize such a deal. "the product directly relates to what my employer does so I've sort of cornered myself in a bad place" Yeah, that makes it complicated. Even the advice to get a lawyer is tricky, as it could telegraph intent and put you even further in a corner. I suppose a consultation is fine, but I would be very careful about letting them know you retained one. Nonsense. OP needs to get a lawyer. There's no harm in letting them know they've retained one -- most savvy employees have. On the other hand, the risk vector here is from the employee already making the cardinal mistake of working on something during off hours that directly competes with employer's line of business. That's where the battle is likely already lost, unless they live in a state like CA where noncompetes are closer to unenforceable. "Nonsense" Pretty aggressive opener. Is that really necessary? "There's no harm in letting them know they've retained one" It will, for sure, trigger an internal discussion, and maybe some defensive moves like trolling logs or making a copy of his work PC drive. For example, what do you suppose the chances are that the OP navigated to his GitHub repo from a work PC? How is advising caution in this situation "nonsense"? I would weigh the consequences of telling them I had a lawyer, and evaluate anything else I should probably do before telling them. The only thing that's aggressive about that as an opener is if someone specifically takes offense at the suggestion of legal counsel as something you should always have if you can afford it. That's absurd. It is absolutely poor judgment to enter employment without it. If you don't have legal counsel and end up in this situation: 1) You should have had counsel earlier when you signed your agreement. You could have gone through your contract before you signed it, and potentially have gotten revisions. If you didn't get revisions, you could at least correctly understand the boundaries of legal restrictions you're agreeing to. 2) You definitely need counsel now. The situation is going to force you to make a high stakes decision. Even if you can't change the situation, you can at least learn from it. Your responses read like I said "you never need a lawyer". I was suggesting caution before telling your employer you retained one, for this specific situation. I think you are mixing me up with someone else. Also, replying to someone with your opening word as "Nonsense" isn't constructive. I don't get it, OSS has owners? Cant you just transfer a fork? I just do corporate politics by first being an employee who does everything within reason to help the work progress. Eventually this builds towards managers acting in my interest. If they fail to do that I start removing myself from such extra activities. If you wrote some great software they can use you should transfer it since they will find ways to reward you for doing such things... unless you know they wont, then you have to be a pain in the ass while reminding them what you've already selflessly done for them. Just be sure you are a nice guy and ask yourself if they are nice to you. If not, can you condition them to be nice? If not, take the legal route for everything. Alot depends on your employment contract. Tell them it's OSS and they can fork the code-base if they want more fine grained control. I know it's not going to resolve any issues but at least you are forcing them to say why that's not possible now and what long term plans they might have in store. Well, the question is about the authorship. If the company holds the copyright, and always held it based on whatever is in the employment agreement, this will not work, since they can just relicence the project, and the original licencing of the work under OSS license would also be in question. If I'm reading it right, the company asked to transfer control of the code-base. It's not a cease and desist which you normally see in ownership disputes. I'm not in the US and the laws could be different. But from a local legal standpoint they admitted to having no ownership claim by asking to transfer it. Ownership might also be the wrong terminology, but I wanted to avoid the word "authorship" because you can never relinquish that right. At least to our national laws... Again not sure how it works in the US This is a great idea. Obviously do it only after talking to a lawyer first. Your employer is also a huge POS for doing this, if you know people with pull in the OSS community or software community in general you could threaten to make a stink over it. This is terrible behavior on their part. How so? Corporations are amoral. Their job is to maximize profit. This is something of value to them, produced (presumably) under employment contract that entitles them to it. They are obligated to take ownership. This must be the first comment where I disagree with every line in it(except the How so?) Corporations are as moral or amoral as their leadership wants. Your average small bakery better has some good standing in a community, so it better behaves reasonably. Their job is to keep existing, hence making some profit. That can be just enough or maximal, again depending on the wishes of the owners. The long term value of the OSS community relationship might be more valuable than just grabbing the project. The law might explicitly not entitle them to grab it. They can try to take ownership but are not at all obliged. In fact the psychopatic behaviour of todays megacorps is unravelling the fabric of the societies that enable their existence. Every once in a while something like this comes up in HN and the top voted answer is always “find a lawyer”. My 2 cents - don’t. You want compensation, you want to direct the roadmap. Your employer wants ownership. Where is the conflict? Why make one? (P.S. - my legal experience “peaked” about a decade ago when I hired Andrew Valentine, managing partner of DLA Piper Palo Alto to help bridge what should have been an easy win-win. We ended with a whole lot of losers. I got a full refund, though, so yah.) (Also - Andrew, in case you read this, you never sent me the invoice for the out-of-pocket expenses you paid to UPS documents to San Bruno. I’d be happy to pay those. Contact in profile.) Lawyers don't necessarily mean conflict, just very specific agreements. ^ Totally agreed. Key is to see them as a partner, not someone just handling the legal side. You actually want a lawyer who keeps the end goal in mind, and doesn't just want to protect their client at all cost. On some of the key terms in a contract: explain me the situation, give me the options and the associated risks, and then let me make the call on what I (as the client) find acceptable. I've never seen something blow up when operating in this way. ... just very specific norms FTFY The broad spectrum of legal counsel available to OP includes far more than extremely expensive biglaw partners. And besides, if all of DLA Piper’s outcomes were poor, they wouldn’t exist. It’s remarkable that they refunded you. You haven't specified two things that are important here - the country's laws that apply to your case, and did you make the product using anything the employer owned (for example on your work computer) Agreed, this is a legal issue. Consult a lawyer. DO NOT SIGN ANYTHING! If they insist, let them know you are consulting with a lawyer. If they pressure you to sign documents then consider that they don't have your best interests at heart. Depending on the company their position could either end up being very friendly, or very unfriendly towards you. Also remember that, if you feel this is a project with great potential, it might be worth quitting your job over. The legal position will be different depending on the jurisdiction you are based in. The laws of Belgium are different to those in say, Delaware. I would not tell them you are consulting a lawyer. This can make the relationship with your employers very antagonistic very quickly. Your legal options are really based on what your employment contract says and (to a lesser extent) what state you live in. If you signed an IP agreement, then they almost certainly have ownership. If you didn't, then they are in a weak position but they probably have more money than you and they pay your bills so they have leverage if you got into a fight. ... But I don't feel like this is primarily a legal issue. It is a negotiation about property. The contracts come into play but the company and you both benefit more from a negotiated agreement than from a fight. It hurts them if you get mad and just quit, fork, give them a PR black-eye, and take the community with you. So you should:
1. Take your employment contract and ask an attorney to look at it.
2. Ask if this document gives them the right to transfer control of an open-source project to them.
3. Decide if you are willing to quit over this or not. Once your head is clear on what you are willing to do, it is time to start negotiating... Hire the attorney to negotiate for you. Don't do it yourself -- you need a 3rd party and lawyers are professional negotiators. Expect to spend some money -- feels roughly like 5-10 hours if it goes quickly. You should be very clear to your company that you are asking a lawyer to negotiate for you because you want to work something out and you feel like it will destroy your relationship with them if you try to do it yourself. Then get the attorney to discover why they want legal control of a project that is open-source when they already have you as an employee. If they care about the project and just want to influence the roadmap, they could just pay you to work on it full-time and get most of the benefit. If they feel like they need it for other reasons, see if there is an overlap between what you want and what they want. If they just feel like they own everything you do, you need to decide if that's what you signed up for. Overall, I find it hard to give any better advice because you only presented what you want and not what the company wants. It could be anything from appearances (their investors want them have control) to money (they see a way to make a lot of money from your work). Until you know what the other party wants, you can't really come up with an agreement. What’s the open source project’s license? Apache 2.0. Just give them a copy of it on a USB drive. Tell them enjoy do whatever. Keep going on your copy while they can do what they want on theirs. 1. Don't commit to anything until you know what you are doing.
2. Gather information
- your contract
- what your states law on Non-compete is
- Was it your time, your equipment, your services used for development?
- What are the open source licenses
3. Decide what you want. Do you want to start a business?
4. Understand your employers position and what they want.
5. Get a free consultation from a GOOD lawyer. Ask around and find out who is the best. Then see them Think entrepreneurially. Could you spin this off as a separate company with your current company owning some equity in it and you holding the rest? Maybe the company or its investors could give you funding to help productize your code. I’m other words this was not a mistake. Everything is working out perfectly. Instead of thinking about compensation or cashing out think of ways your current company can contribute to improve the product. I've been in that situation before where the company threatens to fire you you unless you agree to their terms, even if they are obviously inappropriate and probably illegal. Schools can also demand ownership of your independent work by withholding your diploma, a rather nasty practice. The best option is probably to look for another job (or self-employment) ASAP and make sure that your new contract clearly specifies your own independent project(s) as not being owned by the company. > In hindsight, I also made some mistakes in how I went about evangelizing it. I'm very curious about what these mistakes were. It would be great to learn from this. Visit a lawyer. It'll be a couple hundred $. Ask them to explain what your rights are - it's not just what's in the contract, it's how it'd be interpreted under applicable law, and you have to do a cost/benefit in terms of cost of exercising your rights vs. how valuable it is. If a couple hundred is too much, you just did the cost/benefit and decided it's not worth it. How much do you want to keep working for your employer? Fighting them on this might have negative side effects on the longevity of your employment. They want the codebase or the project name,github and websites? If they just want the codebase it's a simple OSS fork, why would they need your permission? They could surely fork it and take it from there. They would rather want that they own the code-base so that their enterprise customers can be assured that it is a product that they control and own. My product, unintentionally, solves a lot of problems for the enterprise product that my company sells. Still, in all the discussions here I don't understand what is meant that they "want to own the codebase". This is open source, so everyone who has a copy of the code can do freely within the limits of the license. So what exactly do they want when they control the codebase? Do they want to make it closed source, or just more input on the development. Unless they want to close the source, it sounds to me just like a question of negotiation of aligning your and their interestes and it sounds like you could at least partially support your own product on work time. And of course, you need to balance any theoretical gains by winning a legal argument with your company with your long-term employment interests. Ah, this is the landmine you've trod on; you can't make a side project that fixes some other product of your company without really annoying the people making the other product. Do they want to keep it open source? Unintentionally? Maybe a more practical option since it's open source, let them fork it and you each run with your preferred roadmap First you need to decide what you want exactly unless you know exactly what you want talking to the lawyers or even your company is pointless as you need to know your position before you can start any kind of real negotiation
1. financial ompensation
2. Control over what happens in the future with the code. Depends on what you signed in your employment contract. Microsoft et al clearly state that they own that code. What I dont get is why is it a problem at all if it's open source. Just give it to them with the name changed (you keep the branding) and you can always keep working on your fork As others have suggested, if the OP doesn't own the rights to the code it's not actually open source until the company makes it open source. Putting an open source license on someone else's code doesn't make it open source. Read this: https://www.newyorker.com/magazine/2018/01/22/when-barbie-we... Get your employment contract in front of a lawyer. Don't know where you're located. But In EU, the employer only own the code you type at your work (or during your work time if remote) It's in the contract. He can only bother you if you code for money outside your work. It can be seen as a second job. Again check your contract. I don't think there is an EU wide standard about what is possible and what isn't in this regard. Tell them no. You may be fired but then again, I think it's worth it to not give up your app. Hey, are you the guy who made NGINX? I would focus on what you want to get out of it. Have them purchase it from you and get an additional promotion or something out of it for yourself. They prob dont want a conflict over it. I work for a big corp. I want to do side projects, and I want to make money off of them. How do I make sure I don't end up in this situation in the first place? I thought about this some.... if the company agrees to publish it as foss you could always fork the project back later. Just agree so long as they keep it open source. It's no worse than where you are now and then you are the expert and code maintainer. "I also made some mistakes in how I went about evangelizing it." What does this mean, did you use company time and resources in doing so? “Keep doing what you’re doing until someone threatens you with physical force, PHYSICAL FORCE” - Unknown Would they still be interested if it was gpl? I should have thought about GPL when I released the code.
But, that boat has sailed.
Could they change the license later on if it is initially GPL?
I'm thinking about the next project that I'll be doing so that I don't repeat the same mistake. For the future, I would totally read Social Architecture. It's available here for free (libre and gratis), and is not long, 100 pages or so printed. https://hintjens.gitbooks.io/social-architecture/content/ A huge part of that is how to structure an open source project so that it can't be taken from the community. Basically a combo of GPL and taking community contributions without having them assign copyright to you is the most full proof way to keep something open source. To answer your question, if they own everything they can relicense it any way they see fit. Only by having your code mixed with others' that you don't own can you practically protect it from forced relicensing. > Basically a combo of GPL and taking community contributions without having them assign copyright to you is the most full proof way to keep something open source. Sorry, but your advice is refuted by research. Both GNU and Apache ask developers to sign contributor licensing agreements. For Apache, see “ASF Contributor Agreements”, https://www.apache.org/licenses/contributor-agreements.html. For GNU, see “Copyright & Compliance” at https://www.fsf.org/licensing/. The Wikipedia article about Contributor License Agreements cites this article by OSS Watch, http://oss-watch.ac.uk/resources/cla. This is the first time I’ve heard of OSS Watch, but they might be a helpful source of legal advice based on their About page, http://oss-watch.ac.uk/about/ Opinions differ on CLAs. There are certainly arguments for them as laid out in that article. There are also arguments against them in many cases, including that they create friction for new contributors. "Oh, I have to sign this agreement which means talking to my company's legal staff? I think I'll just pass." The parent is also probably right that GPL with no CLA makes it much harder to change a project's license. This actually came up when GPL v3 was released. As it turned out, Linux apparently didn't want to change Linux from a v2 to a v3 license. But there were also legal questions about whether he could do so by himself even had he wanted to. (Though Eben Moglen argued at the time that he maybe possibly could have for various arcane reasons.) ADDED: I recorded a podcast on this and related issues recently: https://podcasts.apple.com/us/podcast/open-governance-chris-... Your podcast is very good! I recommended the series to a friend who manages an open source project. Looking forward to your other interviews. In the podcast episode, the guest does mention people are moving away from CLAs. He goes on to say projects are adopting a “Developer Certificate of Origin” model. I found an article that helped me start to understand differences in these models: “CLA vs. DCO: What's the difference?”, https://opensource.com/article/18/3/cla-vs-dco-whats-differe.... Thank you for the citation. I’ve added that episode (and the rest) to my listening queue & look forward to your other episodes too. Looks like a cool podcast! A CLA isn't necessarily a copyright grant. The Apache one for instance doesn't have you assigning copyright to the Apache foundation. It's just signing that you actually own the works in question. I have issues with the GNU assignment. It means that we're reliant on future owners of the GNU project to not ever relicense the codebase. A single owner is a single point of failure. I've heard that sort of thing called a developer certificate of origin or something along those lines. The FSF is arguably something a bit unique. But most of the point of a CLA is to give a company/organization ultimate control over a code base so that it can dual license, etc. Url gives 'Server not found'. Try: https://legacy.gitbook.com/book/hintjens/social-architecture... The copyright holder can change the go-forward license at any time. The license doesn’t restrict the copyright holder, it restricts everyone else. Your employer isn’t seeking a copy of your Apache 2.0 code, which they already have, they’re seeking transfer of copyright ownership. It really does sound like you’d learn a lot from talking with a lawyer, maybe one recommended by an open source foundation. Lots of lawyers have a first meeting is free policy, so schedule meetings with a few lawyers. Pick the one you like best, or pick none. First, consult a lawyer. Even if you talk to them later without one, you need to know where you stand from a legal standpoint. Honestly, pull a Richard on them. Have Peter Gregory and Gavin Belson bid against each other for it. > I've developed it on my own time Are you paid by the hour? If not, what does your "own time" mean? What license did you choose for your open-source project? Fork it, or have them fork it? Get a lawyer and don’t leave a trail of thought online that could be used against you. Work out a deal with them, because changes are that they have lots of rights on it. You could only made it with knowledge because of your job, perhaps even with tools that they've paid for.. play nice when first talking about it, get a lawyer if it starts getting difficult. Resign if you can afford it and get a lawyer no suggestions here can help you. you need a lawyer. my guess is that the company owns it, but you didn’t provide enough detail and anyway IANAL Get a lawyer and in the meantime tell them to fuck off. Come out swinging WANAL Slap an MIT license on it and give them a copy. Although, you need to make sure you didn’t sign anything during on boarding that would give them rights to any code you write. I’ll go against the “get a lawyer” advice everyone is giving you. It’s pretty clear you have no legal position. But you are the key player in the project. So negotiate. Decide what you could get out of it and ask for it. There should be no lawyer involved with this cause it’s not a legal negotiation. > It’s pretty clear you have no legal position. Nothing about that is clear without knowing the relevant laws of wherever this is, the contract, the circumstances of development, and who knows what else. This is why legal advice from random internet strangers is a bad idea. > There should be no lawyer involved with this cause it’s not a legal negotiation. The very first thing you should learn about negotiation is that you never walk into any negotiation until you know your BATNA. How do you know your BATNA in a situation like this? You talk to a lawyer! Are you covered by California laws? IANAL / AFAIK, CA considers a) if you live in CA, B) if the company is based in CA, C) if most of the actual work was done in CA. There are special, state-wide rights that you have in CA that you cannot sign away, some of which apply to work like this. What's with the downvotes? CA's position on non-competes - including when Californa law applies - can be read about here: https://www.upcounsel.com/non-compete-california and the invention-assignment stuff is even more direct, here: https://thebusinessprofessor.com/knowledge-base/california-l... > The company does OSS and my side-project is also Open-Source. What does it even mean to "keep the ownership" in this case. You have never had an ownership when it's open-source. Probably they can take you're code, fork it and use without your approval, depends on the license used. Step 1. Realize that advice on HN is often wrong and very one-sided (i.e. they were dead wrong about Dropbox) Step 2. Figure out what you want, and why, and get it in writing. Figure out what your company wants, and why, and get it in writing. Then open a dialogue and its time to start talking and negotiating! Get a lawyer ASAP!
When you are an employee, the employer owns all your time. There is no such thing as "spare time" or "side project on my own". That's why employer can tell you that you have to be there and then, can call you at any time and can drug test your to ensure you are 100% committed to the company.
It's just modern slavery.
Sure you can negotiate such clauses out, but it would be still difficult to claim ownership to anything you make "outside work".
For the future - if you are entrepreneurial, create your own company and work on a b2b basis. It is much healthier and you wouldn't run to such problems (or much less likely). > When you are an employee, the employer owns all your time Is this true in the US? Its not in Australia, its actually the reverse here as I understand it. Though making a competing or related product to your employers is sticky ground.