Who owns this code??? 3

[glks89]

I have been a Tek Tips member for a while now, but this is an anonymous handle.

I work for a fairly small software development company. We have a large customer who had previously contracted us to maintain a pretty neat application that had originally been developed internally. For the last year, they have contracted us to develop this application in a new technology. Quite a bit has been changed, but quite a bit is the same, as well. The customer would love to eventually license this to other companies in the same business, helping them to recoup the costs of development, and our company would receive the additional work of doing the customizations.

My boss, the owner of my company, is planning to make some cosmetic changes to this app and sell it to some of our other clients, who do not have any relationship to our customer. He does not plan to tell our customer or give them any of the profits. He has mentioned that I shouldn't really talk about what we are doing with this app, and our company won't be advertising it, just offering it to existing and prospective customers.

I am the sole developer on this application. Obviously, he is planning to have me do the work. This could be a very good thing for the application, and it is a tool that could help a lot of customers, but I have strong suspicions that this is not legal and is violating our relationship with our current customer.

My initial reaction is to tell him I won't work on it. But is there any way that this could be allowed? He says that it is because it has been substantially changed from the original product. But even so, if we were contracted, don't they still own it? I realize that every contract is different, but what would a standard contract say about this situation? I don't want to take such a strong stand and risk my job if it's perfectly ethical and legal, but I sure don't want to do anything to violate our customer, either! The fact that he's keeping it quiet doesn't necessarily mean that he is violating anything in the contract, but it sure doesn't make me feel too good about this!

Should I see a lawyer before I talk to him? Should I ask to see a copy of the contract (with confidential bits blacked out, of course) before I consent to doing this? And is it enough to say that I don't feel comfortable doing this and would prefer that someone else be assigned? Or do I have to bite the bullet and say "this is wrong, and I refuse to take any part in it?" If anyone has any advice, it would be much appreciated.

 

[SemperFiDownUnda]

Sorry what I meant is more towards SQLSisters's comment of

Since the contracting company developed the original code and has expressed an intention to sell it to others, I would be extremely surprised if they have not explicitly kept the software rights. However, stranger things have happened.

It is pretty clear cut to me that they where not the original designers of the system. Thus the leg that they probably have ownership to the code based on that has been amputated.

I agree that you have to look in the contract and I did tell her, glks89, to look at the contract on the clients side.

Smart companies are very reluctant to have another company own the IP straight out to works they pay for.

Also note this.

The customer would love to eventually license this to other companies in the same business, helping them to recoup the costs of development, and our company would receive the additional work of doing the customizations.

If they contracting company owned the IP do you think they would let glks89's company sell it? If glks89's company did own the IP then this is the first system that I have ever seen where both parties own the IP.

By all means read the contract but looking at the original post it does not make sense that glks89's company has the IP or else they wouldn't let the other company sell it.

The other company decided at some point to want to recupe some of the development cost.
1) If it was decided before the modifications I'm sure it would be in the contract that they retain the IP (or some weird royalty system would have to be put in but that is not the case I'd bet)
or
2) The company, after the modifations, realised they might be able to recupe some dev cost and decided to on sell it. This means that either
a) The contract gives them IP
or
b) They don't have IP and glks89's company is letting them renegotiate the original contract so they can sell the application out of the goodness of their own hart.

Which do you REALLY think is happening?!

Agian I do say go back to the contracts but given the information in the original post and taking them as facts glks89's company probably doesn't have IP.


Hope I've been helpful,
Wayne Francis

If you want to get the best response to a question, please check out FAQ222-2244 first

 

[Dimandja]

I think jsteph, in his star winning post, long ago made the points that are being repeated in every other post since then. I think it is fair to say that glks89 already got his answer; and could help us close this thread.

 

[lespaul]

glks89,

So what happened at lunch???



Leslie

 

[glks89]

Sorry, I couldn't get back to this thread for a little while. Well, it was the most awkward, horrible conversation I have ever had the displeasure of starting, but I needed have it. My boss's explanation is that our contracts all state that the customer owns the code (and therefore can do whatever they want with it,) but we maintain the right to create derivative works. This doesn't really make me feel more comfortable with it, as I feel the spirit of that clause really means that we maintain the right to create derivative works from what we have written. As I mentioned before, this was already a completed app that we maintained and then converted to a different technology. I don't really know the exact wording of it, so I don't know how this would legally stand, but I still don't feel comfortable about it.

Fortunately, he gave me an out and volunteered that I don't have to work on it if I'm not comfortable with it, so I think that I will take that. I really couldn't read how he felt about the conversation. He was pretty defensive, which is probably the expected reaction no matter what, and spent the whole lunch hour defending the practice of copy and paste. I am ok with copy and paste, I just think it should be restricted to one's own code. He also said that this would be a different conversation if he was trying to explain himself to the customer, and that he would be very uncomfortable doing that. The other justification that he had is that our customers are really not in the business of selling software (which is true.) He said that the relationship between our customer and their other vendor, who would be a partner in the sale of this software if our customer went ahead with it, is so strained that their chance to recoup dev. costs might never come off. We would not be selling to the same customers anyways. Oh, also, everybody else does it. I think that covers his reasoning.

Now that I know where I stand on this project, all that remains is to figure out where I stand with my relationship with my current company. I wasn't planning to stay in this field for longer than a year, so I am loathe to get a new permanent position. Also, I am not leaving until this project is out the door. I may stick it out for another year, or possibly look for a 6-12 month contract.

I am just getting tired of losing faith in my company. Until about 6 months ago, I thought it was a great place to work. Now, I cringe when I have to call for technical support on software, wondering if we are legal, or if I am going to get chewed out by another support person for calling when our single license is registered under someone else's name. I don't like having to doubt if the tasks I am asked to do are legal, never mind ethical. I am close to having had it. Fortunately, after this last conversation, my boss will hopefully be reluctant to ask little miss conscience to do things that she might push back on, so I may be off the hook for a while.

 

[KornGeek]

glks89,
I glad you stood up for what you believe in. Hopefully this will help your general working environment. It's a tough thing to do, but in the end I believe you'll feel better about yourself than if you didn't.

SemperFiDownUnda,
You did some good reading between the lines into what was likely the legal situation. I had missed most of what you pointed out, but the information was there. Thanks.

 

[SemperFiDownUnda]

glks89 - I feel sorry for what you went through. I'm glad you have a reasonable out. If I was you I'd look for a different company to work for as soon as possible.

Funny how you described your bosses reaction. It's much like you would find in a scenario where a spouse is caught cheating. They tend to get defencive. Justify what they are doing etc etc.

The facts seem abundantly clear. Derivative works apply normally to copywrite owner. Ie the copywrite owner maintians control of derivative work. Your boss seems to have be throwing out legal phrases blindly. Essentially what he is trying to say is that though the company has IP your company can use that IP without notification to the original company.

Which agian I would start to accept, if I saw the contract, but then when he tries to justify "Cut and Paste". Thats a bother. Seems he thinks as long as it is in a different project that it is ok. Look at SCO law suit about a few lines of code that have questionable copywrite in a code base of millions of lines of code.

Then trying to justify that they and their selling partner probably wouldn't be able to sell it....that has no legal bearing at all. Heck if it does I'll look up products that have been baddly marketed. Replicate them and put them through a better advertising campaign and sell them for myself since the original company was so bad that they couldn't sell much anyway.

Honestly if you are going to leave your company I would approach your client and inform them what is going on. Just make sure you have some information documented. Like what your boss wants to do with the system....preferably from some correspondance from your boss. If not your boss can just can the idea and you'll just look like a disgruntled employee if there is no type of paper trail.



Hope I've been helpful,
Wayne Francis

If you want to get the best response to a question, please check out FAQ222-2244 first