Reply to: technicality of ownership and rights

[Sysman]

With software development, it still seems to be the assumption that if you're below a certain size you'll hand over your IP rights to your customer. I think the demise of UK IT has a lot more to do with that practice than it does with Bob Shawadiwadi. If you have no stake in what you're producing there's little incentive to make it good.

You may be right there. In my first contract I fixed some software in the first month which immediately brought in clientco revenues of well over 100K. I gulped at that, but I'd signed the contract so was in no position to complain (but firmly resolved do better at negotiating next time round).

They then offered me a permie job. My reason for turning it down was they had been talking about offering shares but when it came to the crunch none were on offer. The company was obviously going places, and the prospect of getting hold a decent number of shares would have been a clincher.

PS I was back there a couple of years later and the directors still had their mitts tightly on all the shares.

[thunderlizard]

There was a parallel situation with the UK television industry. Independent production companies wanted to sell the worldwide rights to the programmes they had made, in order to make some profit, But the broadcasters kept insisting that the production companies were paid time and materials only, and handed over their IP rights to them, so the broadcasters ended up making all the profits and the production companies kept going out of business. There was a law passed (can't remember which - possibly 2003 Communications Act..?) to correct this, and it basically saved the industry.

With software development, it still seems to be the assumption that if you're below a certain size you'll hand over your IP rights to your customer. I think the demise of UK IT has a lot more to do with that practice than it does with Bob Shawadiwadi. If you have no stake in what you're producing there's little incentive to make it good.

[Fishface]

Sell or give them a license to use the code on condition that they do something for you or pay you a fee -don't sell your copyright.

I understood software was protected under literary law and therefore if it is of your hand you own unless the copyright has been transferred or you have '...work made of hire...' in your contract.

Depends what it is and what value it holds on it own.

[firehawk]

sure i understand. thanks for that

[doodab]

well there isnt in this case (I know you are trying to defend them...for whatever reason). I have asked the solicitor and they said the same thing otherwise I wouldn't be having this discussion.

Plus, why then write in contracts that any code developed by the employee is owned by the company? if it were "implied" then they wouldnt be writing it in the first place.

at the end of the day, business is business and they were unfair to me, and offensive so...thats the price one has to pay.

Er, no, I'm not trying to defend them. Read my other posts, I posted a link to a site on copyright law for example.

Normally the individual or collective who authored the work will exclusively own the work. However, if a work is produced as part of employment then it will normally belong to the person/company who hired the individual.

Freelance or commissioned work will usually belong to the author of the work, unless there is an agreement to the contrary, (i.e. in a contract for service).

So, yes, copyright law is on your side. But there are other laws.

Although you don't have a written contract, there is a contract "implied in fact". Really. I'm not making it up.

There is more info on "implied terms" in contracts Contract disputes: implied terms in contract disputes. London Solicitors in the UK. and here. The first one actually has a vaguely relevant example. As I said, I'm not a lawyer, but I reckon given the nature of the software i.e. bespoke for them, and because as you have said they need these files to be able to make changes or their client won't pay them, they could make a decent case for an implied term that the IP would transfer to them. If I was in their place then unless you were asking for a relatively small amount of money I would certainly be lining up the lawyers.

The point is, if they decide not to pay you, the all you end up with is the rights to some code that probably has no other value. If they decide to take you to court (which seems unlikely as they seem a bit stupid) the best case scenario is that you keep the rights to the code, and maybe they will change their mind and pay you. The worst case is that you have to a) hand over the code and b) pay a bill for legal fees. Either way, you may need to take time out from your next contract to go to court.

So, as I said, the best thing is to ask a price they are willing to pay, and be prepared to negotiate. Ask any more than that and you end up with nothing or maybe less.

[firehawk]

Thank-you. This is what im saying. But IR35 somewhat backs me up even more (use own equipment/software on client site)

[mudskipper]

BCS seem to agree with you.

A contractor working for a client under a contract for services, as author of the copyright work, is likely to be the first owner of copyright.

[mudskipper]

"All copyright and other intellectual property rights in all work, including all work of a preparatory or design nature, or developed or created from such work in performing the Contract Works for the Client shall be deemed to be the undisputed property of the Client"

I guess this is pretty standard.

[mudskipper]

<scuttles off to check contract>

[Sysman]

Actually, there is a contract. It's an implied contract. As there is no written contract specifically excluding transfer of ownership, it would ultimately be down to a court to decide whether transfer of ownership was an implied term of the implied contract, which they might do because it's customary to have such a transfer in contracts to develop software.

IANAL BTW.

The "by default" bit I was talking about was what clientco's lawyers had advised. They made it pretty clear cut to me, to the extent I've always looked for an ownership clause in subsequent contracts.

[firehawk]

well there isnt in this case (I know you are trying to defend them...for whatever reason). I have asked the solicitor and they said the same thing otherwise I wouldn't be having this discussion.

Plus, why then write in contracts that any code developed by the employee is owned by the company? if it were "implied" then they wouldnt be writing it in the first place.

at the end of the day, business is business and they were unfair to me, and offensive so...thats the price one has to pay.

I specifically requested a written contract many times -they said they would do it, they had ample time and they never did it.

[doodab]

exactly my friend. this is the whole debate on this thread

obviously if there was a contract and they put it in the clause that they own the software that I develop, then sure its a different matter altogether. but the matter of the fact is there was no contract and also there was no verbal agreement anyway that they own the files/software i develop

Actually, there is a contract. It's an implied contract. As there is no written contract specifically excluding transfer of ownership, it would ultimately be down to a court to decide whether transfer of ownership was an implied term of the implied contract, which they might do because it's customary to have such a transfer in contracts to develop software.

IANAL BTW.

[firehawk]

well the partner/associate said that they "didnt realise it was going to be that much" and she doesnt have authority to approve it until the MD comes back into the office.

I guess if the price was lower then it would all be ok.... but hey, I can charge whatever I like.

[firehawk]

exactly my friend. this is the whole debate on this thread

obviously if there was a contract and they put it in the clause that they own the software that I develop, then sure its a different matter altogether. but the matter of the fact is there was no contract and also there was no verbal agreement anyway that they own the files/software i develop

[Sysman]

ownership lays with the author unless otherwise stated.

That was made abundantly clear to me on my very first contract. The client explained to me that if they didn't put a clause claiming ownership of the software for themselves into the contract, I could by default end up being the owner of any software I wrote for them.