Reply to: Intellectual Property Rights

[eek]

hope you don't mind me asking here as I didn't wanted to open new topic and it is kind of similar question

If I worked for the company doing roofs on conservatories not as an employee but ltd company and i was taking the pictures of the works done to document what am i doing and I have never send them over to the company that was hiring me to do it, I have started using these pictures on my own website to provide an examples of my work as it was done by me. They have told me that they do not want me to work for them anymore as they have seen my website and they told me now to sign the agreement where i give them all rights to use all intellectual property: pictures, videos, copies and originals so they can use them by themselves.
I have to mention I have never signed with them any contract but I have been sending them invoices for the work done on a weekly basis for the last 3 years and they always paid on time. Do they have the right to ask me to sign it now or I do not have to sign it and I can keep using it? They also want me to remove all the pictures from the website and they withold my payments for the last 2 invoices I gave them untill I will not do as they tell me to do it?

Not sure if I stand any chance in this situation to actually fight with them as I do not see a reason why would I have to if I wasn't an employee.

Thanks for all your help with it.
Krystian

You have 3 issues there so let's break them down:-

1) for the threatened miss payments the usually go to site is Debt Collection and Debt Recovery from Safe Collections who do post on here at times.

2) it seems that unless you give them the photos you won't get anymore work from them. If you need that work you need to decide what to do, if not they've just created a competitor and I hope you know how to run a business and where they get their business from.

3) the work you do and the photos you take of that work are entirely separate and you own the copyright of those images separately to the work you were paid for - so you don't need to give it to them unless they pay you for them or point 2 applies.

Either way you've burnt your bridges with them by the looks of it so I would by phoning their competitors to see if they have any work for you or starting up by yourself.

[Krystian]

intelllectual property rights

hope you don't mind me asking here as I didn't wanted to open new topic and it is kind of similar question

If I worked for the company doing roofs on conservatories not as an employee but ltd company and i was taking the pictures of the works done to document what am i doing and I have never send them over to the company that was hiring me to do it, I have started using these pictures on my own website to provide an examples of my work as it was done by me. They have told me that they do not want me to work for them anymore as they have seen my website and they told me now to sign the agreement where i give them all rights to use all intellectual property: pictures, videos, copies and originals so they can use them by themselves.
I have to mention I have never signed with them any contract but I have been sending them invoices for the work done on a weekly basis for the last 3 years and they always paid on time. Do they have the right to ask me to sign it now or I do not have to sign it and I can keep using it? They also want me to remove all the pictures from the website and they withold my payments for the last 2 invoices I gave them untill I will not do as they tell me to do it?

Not sure if I stand any chance in this situation to actually fight with them as I do not see a reason why would I have to if I wasn't an employee.

Thanks for all your help with it.
Krystian

[dx4100]

I wouldn’t sign it...

Made me chuckle that we never enforce it... so why is it there lol

[fidot]

I wouldn't accept those clauses even in an employment contract.

[BradleyPallister]

I'm looking at a new contract which, amongst the usual fluff, has a section on intellectual property rights.

The contract basically states that any IP I develop or create, whether or not during the contracted hours, belongs to the client. In addition, I'm expected to assign any *existing* rights, patents, and copyrights to the client. Unsurprisingly, I don't agree with these clauses and will attempt get them changed.

My suspicion is that this is a standard lawyer-delivered contract that the client probably hasn't even read themselves.

QQ: in the UK are these things actually enforceable / legal? (I agree that anything I build for the client is theirs, but I do other stuff too, including open-source and support work other clients)

Boris

Absolutely legal and enforceable yep

[darmstadt]

That stands up with other lies such as "no-one else has asked for a change". If it is never enforced then there is no reason for it to be part of the contract. And it's easy. You strike through that clause, initial and date it, and then sign the contract. Send it back with a note to say that you've amended it by striking out the never enforced clause.

If they don't accept it, walk away. They're clearly not the kind of people to whom you wish to provide services, as such ****wittery will raise its head elsewhere - guaranteed.

Pretty much this. I've had a couple of similar contracts come through with wording similar to the OP and did not agree to it. Most of my contracts already come signed by the agency/client and I just return a signed copy back to them. In these cases, I strike through the offending line, sign and date it next to the offending lines and ask them to do the same and send me back a copy so I have a copy. Worked fine both times.

[pauldee]

Let me get this right: if you have done any work in the past, outside of the work for this client, previous to signing this contract, and you have any IP rights for that work, then by signing this contract, those rights automatically become the property of the client? That's madness?

I don't actually have any, many of us probably don't. But I know the odd person who has a side product they are trying to get off the ground. Would that then belong to the client? Why on earth would they think that was acceptable?

[Paralytic]

I hope people realise that they are commenting/making recommendations on this based on the OPs interpretation of the contract - the actual wording has not been shared. I've seen so many contracts where the legal meaning can be somewhat different from the layman's reading, especially when clauses cross reference other clauses.

OP, have you had someone legal review the contract?

[tomtomagain]

I contribute to a couple of open-source projects, so technically yes I do generate & own some IP that could be caught up in this.

If you contribute to OS projects, you probably don't "own" the IP, the projects are by their nature open and almost certainly have a permissive license already attached. You've already waived your right to claim the IP. So it's not in your gift, even if you wanted to, to transfer the rights on bits of code within those projects, to another 3rd party. If it was OS would have been dead a long, long time ago.

Also it's not reasonable for you to be forced to hand over any property ( the P in IP ) as a pre-requisite for starting a contract without remuneration for that property. Whether it is enforceable in a court .. IDK.

If you started a contract as a delivery-driver and they said : "If you have a van, we will own that van" ... what would you say? I'd say, "If you want my van, you must pay for it". Either that or F'Off.

The client is now essentially saying "take it or leave it" - they won't accept changes to their contract. In fact they seem rather affronted that I'm asking for it.
Silly people

If they are a software product or SAAS company then they are not being that silly. They want to guard against you taking their IP and regurgitating it later at their competitor ( or putting it into your OS project ) and they don't want the risk of you putting anything into their product that someone at a later date will claim IP on.

So for example, if you have IP on an algorithm that you then implement within their code-base, they don't want to be on the hook when you sell your IP to some patent troll.

If they are not a techie company then they are probably just being a pain in the ass.

[NotAllThere]

We are now at a stalemate: the client insists it’s never enforced and is just part of a standard contract.

That stands up with other lies such as "no-one else has asked for a change". If it is never enforced then there is no reason for it to be part of the contract. And it's easy. You strike through that clause, initial and date it, and then sign the contract. Send it back with a note to say that you've amended it by striking out the never enforced clause.

If they don't accept it, walk away. They're clearly not the kind of people to whom you wish to provide services, as such ****wittery will raise its head elsewhere - guaranteed.

[Boris]

Do you have any existing IP or patents etc? And do you work on any projects out-of-hours?

Personally I'd never sign anything with those requirements, but then I *do* have IP. If you don't then it's a risk you could decide to take.

I contribute to a couple of open-source projects, so technically yes I do generate & own some IP that could be caught up in this.

The client is now essentially saying "take it or leave it" - they won't accept changes to their contract. In fact they seem rather affronted that I'm asking for it.

Silly people

[tomtomagain]

We are now at a stalemate: the client insists it’s never enforced and is just part of a standard contract. So I asked for it to be reworded or deleted. Can’t be done - otherwise it wouldn’t be a standard contract.

Current tack is to get them to commit in writing by email that it won’t be enforced and only applies to the ‘work product’ of their contract.

I’ll give it another day and then thank them for their interest and decline to proceed.

Pity, would have been a fun gig.

Do you have any existing IP or patents etc? And do you work on any projects out-of-hours?

Personally I'd never sign anything with those requirements, but then I *do* have IP. If you don't then it's a risk you could decide to take.

[Boris]

Yes, it's enforceable. Yes, as a contractor you must contest it - you may have another client for whom you do work, so it clearly conflicts with your business model.

We are now at a stalemate: the client insists it’s never enforced and is just part of a standard contract. So I asked for it to be reworded or deleted. Can’t be done - otherwise it wouldn’t be a standard contract.

Current tack is to get them to commit in writing by email that it won’t be enforced and only applies to the ‘work product’ of their contract.

I’ll give it another day and then thank them for their interest and decline to proceed.

Pity, would have been a fun gig.

[Boris]

Hmmm

Anyone else find it interesting we have a Boris asking about a new contract and whether stuff is enforceable, at this particular moment in history?

Well if I don’t sign the contract it will still be accepted of course!

[WordIsBond]

Anyone else find it interesting we have a Boris asking about a new contract and whether stuff is enforceable, at this particular moment in history?