Discussion:
What is the name of your state? Wa
I have a situation where I co-wrote software with a group of people. Copyright could be claimed at least in part by any individual in the group. It was a stupid makeshift arrangement, no contracts, just a bunch of guys getting together and writing code. I since LEFT the group. Due to the way copyright law is, I suppose I still have partial rights to the old project, but so do the others.
Now, I have another company that wants to hire me to write similar software. That company owns the idea, and it is an original work. A second work, identical or similar to an earlier copyrighted work, does not infringe, if it is, in fact, independently created (no actual "copy" of written material is used). So this seems fine.
HOWEVER, There is another twist in copyright law, seemingly contradictory to above: a work does not have to be identical to infringe copyright in an earlier one, WHEN the creator has "access" to (any ties back to) the earlier work. Since I did not sell my rights and cut ties to the old project, I still have "access" to it according to law. The independent Company I am talking about, in and of itself, has NO "access", so it is safe from this issue. BUT what happens when it hires ME?
Question:
Who is considered Creator at this point, in a Company/employee relationship, or even a Company/Contractor relationship (Should I be contracted, not hired)? Is the Company the creator of this work it owns (and initially created all specs and designs for), or am I the creator just because I am physically writing the new work, doing the job I was hired to do? (again, I am not copying or bringing over any material from my old project)
Could my former group that worked on the old project sue this independent company with their original work, simply because I (with my old ties and "access" to similar work) was hired to contribute to the work of that company?
Is there really infringement here? I can see it would be an issue if I was claiming ownership of the "new" work, but I am not. The independent company created the project, drafted the specs, and are simply considering hiring me to write the code for them.
Thoughts? Experiences? Please do share.
Answer:
Any work you do for the company, on company premises, or on company time belongs to the company and not you (typical).
From what you describe with the company independently coming up with a similar idea and you not copying code for it, it does not appear any infringing would actually occur.
Answer:
"Who is considered Creator at this point, in a Company/employee relationship, or even a Company/Contractor relationship (Should I be contracted, not hired)? Is the Company the creator of this work it owns (and initially created all specs and designs for), or am I the creator just because I am physically writing the new work, doing the job I was hired to do? (again, I am not copying or bringing over any material from my old project)"
Generally, under Copyright Law the creator(s) of the original work is [are joint] owner. This changes, however, when the creator in fact agrees that the work was specially commissioned and constitutes a work made-for-hire. But that needs to be expressed in a written agreement. Otherwise, the hiring company doesn't become the copyright owner.
Could my former group that worked on the old project sue this independent company with their original work, simply because I (with my old ties and "access" to similar work) was hired to contribute to the work of that company?
The simple answer is anyone can sue anyone else. Whether they would prevail is the question. Where copyright is jointly held, each part owner can license non-exclusive rights in the copyright. This poses an interesting situation. Let's call your first company ACo and your new company BCo. Let's call the original software Asoft and the new project BSoft. If you are a joint owner of ASoft, you can license ASoft on a non-exclusive basis. While this would preclude your original co-owners at ACo from suing BCo or you for copyright infringement, it also prevents you from entering into a work for hire agreement unless it excludes any portion of ASoft. You are now caught between a rock and a hard place. If BSoft is similar to ASoft, albeit developed independently with no access to ASoft, your former colleagues and co-copyright owners will think you are using elements of ASoft. They may very well attempt to sue you but your defense would be (a) I didn't use any of ASoft language or architecture and (b) even if I did, you have no copyright infringement because I have the right, as a joint owner, to license ASoft non-exclusively. BCo, on the other hand, may be concerned that your work on BSoft may incorporate elements of ASoft accidentally or unintentionally but BCo. can't own any of ASoft. The solution would be for you to enter into a work for hire agreement with BCo if they required it, exclude from the conveyance any portion of ASoft but license to BCo any portion of ASoft that may find its way into BSoft. Jeez, I hope this isn't too confusing.My only caveat is that there are, potentially, other state causes of action your former colleagues could bring against you but if you don't use ASoft, you should ultimately be okay and hopefully, cooler heads will always prevail.
Is there really infringement here?
No
Answer:
Both replies so far are appreciated and useful.
spmlawyer, your post is simply awesome. I had to laugh by the time I got to the end. Yes, it can be confusing, but I followed every bit of it to "T"!
Question about your comments:
If individuals in joint ventures like this have non-exclusive licensing rights as you say... and one individual does license it out for "free" or cheap, would the other individuals have a right to come in and dictate a licensing fee, and/or be entitled to profits?
Two possibilities for me might be:
1) Get the former partners to agree to divide the code and maintain rights only on items they actually conmtributed.
2) Get it in writing that even though we all have rights connected with the old project, that I (or we) are allowed to write new software, even if related in some way to the old, without penalty or rights to sue over it, nor dictate or claim licensing fees or assume profits over it.
I believe either of these options would prevent any future lawsuit, override or satisfy any unseen state issues, and grant the ability for me to move on with new things, even if future work has any resmblance of old. That being true on option 1, only if my new stuff doesnt resemble anything they reclaimed rights on.
Another question comes to mind: On joint ventures like this, what if one individual crafts the entire work, and the other individual only adds a cherry on top (maybe consisting of 1% of the total). They now have full non-exclusive rights to license that entire product? Man laws are stupid and NOT helpful for the true innovator sometimes.
Answer:
Once the joint owner makes a non-exclusive license, the other joint owners are bound by it. The licensing joint owner must account and pay the others their proportionate share. In the absence of an agreement between/among the joint owners each party gets an equal share of the licensing fee. If a joint owner makes a "sweetheart" deal, the other owners can go after him/her for a variety of claims.
The much better approach would be to reach a written agreement where the ground rules about licensing, approvals, etc. are worked out.
As to the cherry on top, if you mean quantity versus quality, then yes, the cherry provider will usually not be considered a joint owner but the courts tend to look more to quality. As a matter of fact, issues involving joint ownership include the intention of the authors, control of material going into the copyrighted work, the independent copyright ability of the individual contributions and other factors. It is not an easy determination and seems to be more and more of an issue as collaborations become successful works and there's no written agreement between the parties.
When I was a kid, it didn't matter that it was a Lindy's cheesecake, that cherry on top made all the difference. When I was a young father that cheesecake was the thing and I gave the cherry, superfluous as far as I was concerned to my kid. Now, I just have a cup of coffee and do without the cake and chery. Go figure,
Answer:
Here is an interesting alternative to the conclusions in this thread:
So, if I contributed to a joint effort and therefore have shared rights on a prior work, and then give up those rights and surrender them exclusively to the other authors, would I be sufficiently cutting off my "access" to prior work?
If I have no "access" or rights on a prior work, I am pretty much free to innovate like anyone else, including creating a similar work from scratch. Yes/No? It would of course have to contain no direct copy of the prior work (which I gave up access to anyway), but that is a given.
Would this strategy work in seperating me from the old and protecting the new? I base this off the impression that jointly owned is BAD, and since they wont allow me to exlusively own it, then hows about I let them exclusively own it? That way, at least its not jointly owned, and I go on my merry way.
Thoughts?
Answer:
Surrendering your rights in the work does not negate your access.
But, showing infringement requires more than showing access. The plaintiff must also show substantial similarity between the two works.