The topic here is, “who owns what I write on my own time?”
Some curious legal language seems to be making the rounds in Silicon Valley. I have seen multiple prospective employers using it. The details are very different from the IP agreement that currently binds me, and different from the practices of previous employers such as Xerox. Background: Xerox PARC takes intellectual property seriously, and for many hours I collaborated with Xerox patent attorneys to get IP details right.
In my current employment I routinely “promptly disclose” all manner of things by choosing to use email accounts and git source code repositories supplied by the company. It works great, the right thing happens, it is easy to comply with the rules.
Here is my view of the “example language” appended at bottom.
Section 1 is clear.
Section 3 implicitly incorporates 2870 and it makes sense, I embrace it. My current and past agreements match it pretty closely.
Section 5 makes explicit reference to 2870 and it also makes sense to me.
Now we come to the prompt disclosures duty of Section 2, which I find nonsensical and overly broad. Let’s focus on copyright law. The definition in Section 1 lumps in trade secret and patent law with that, areas that I am fine with. Secrets stay secret, there are limitations on how I may interact with USPTO, that’s all good.
In the U.S., documents are born with copyright unless they bear special markings, such as a Public Domain notice. This morning on a post-it I wrote a grocery list, “get milk”, and it implicitly starts with “Copyright 2022 John Hanley”. It is clearly an Invention, it is a copyrighted work of authorship. I did not produce it within the scope of my employment; 2870 applies. Section 2 imposes a duty to promptly disclose the grocery list to my employer, which I find nonsensical. It is not a duty I am keen to accept. If tomorrow I paint a watercolor landscape, it would fit in the same category, imposing similar duty.
Let us turn to a more substantive example. I routinely participate in online communities that make available answers to technical problems under Creative Commons or MIT licenses, such as: stackoverflow replace-substring-in-python-path or optimize-table-comparison . I create these technical answers outside the scope of my work, conforming to 2870. They are clearly software, as well as works of authorship. I am not keen to promptly disclose each such online interaction to my employer. I want to follow the rules, but I want them to be rules I can follow.
The currently proposed draft language poses certain difficulties. But drafts can always be edited.
Purpose of Agreement … As used in this Agreement, “Inventions” means inventions, improvements, designs, original works of authorship, formulas, processes, compositions of matter, computer software programs, databases, mask works, confidential information and trade secrets.
Disclosure of Inventions. I will promptly disclose in confidence to the Company … all Inventions that I make, create, conceive or first reduce to practice, either alone or jointly with others, during the period of my employment, whether or not in the course of my employment, and whether or not patentable, copyrightable or protectable as trade secrets.
Work for Hire; Assigned Inventions. I acknowledge and agree that any copyrightable works prepared by me within the scope of my employment will be “works made for hire” under the Copyright Act and that the Company will be considered the author and owner of such copyrightable works. I agree that all Inventions that I make, create, conceive or first reduce to practice during the period of my employment, whether or not in the course of my employment, and whether or not patentable, copyrightable or protectable as trade secrets, and that (i) are developed using equipment, supplies, facilities or trade secrets of the Company; (ii) result from work performed by me for the Company; or (iii) relate to the Company’s business or actual or demonstrably anticipated research or development (the “Assigned Inventions”), will be the sole and exclusive property of the Company.
Excluded Inventions …
Exception to Assignment. I understand that the Assigned Inventions will not include, and the provisions of this Agreement requiring assignment of inventions to the Company do not apply to, any invention that qualifies fully for exclusion under the provisions of Section 2870 of the California Labor Code, ….
(Image credits: ambees , MStewartPhotography )
Copyright 2022 John Hanley. MIT licensed.