Discussion:
I'm in the IT business. Recently, I have resigned from the my old company and partner with a friend to open up a new business. During the years with the old company, I have wrote a software and the company have sold it for million of dollars (I just found out) and I never get any loyalty or bonus for this. Of course, I was very unhappy and left the company to form my own. Here is the thing, my old company is never filed a trademark for the product and with the new company, I have filed for a trademark. Secondly, I have changed and added more capabilities (functional) to the product. My question is will I able to defend and/or prevent my old employer to come after me for a lawsuite? Also, any advice on how to my case stronger in case we are in court?
Thanks in advance,
Braveheart
Answer:
It depends on whether the software was a "work made for hire" for the company. Often, the creative people legally assign all rights to their creations to the company that employs them.
If so, the question is whether your modified software is different enough to avoid copyright infringment and potentially patent infringement. This is a complicated analysis which depends on the specific facts.
Trademark rights, similarly, depend on the facts of your case. If the software had the same name when you created it as your current trademark, and if the company owned the rights in the software (see above), then the company's prior USE of the trademark will give the company superior rights to your trademark REGISTRATION (in the United States, the first user of a name usually wins).
As you can see, further details are needed before your situation can be analyzed.
Answer:
Thanks, counsel.
You said "the first user of a name usually wins". What do you mean by this? Do you mean the first user regardless of having the trademark? In my case, the old company will win the case?
Thanks in advance,
Braveheart.