Copyright clauses in employment contracts

[wprk (Will Parker)]

Just curious as to what you guys make of this clause in my employment contract.

The Employee hereby assigns to the Company with full title guarantee
all vested contingent and future rights in any works created by the
Employee during the course of his or her work for the Company including
all copyright, design right or other rights of a like nature throughout
the world, whether now or in the future created, to which the Employee
is now or may at any time after the date hereof be entitled absolutely,
for the full duration of such rights and all renewals and extensions
thereof together with all accrued rights of action in respect of them. All such rights will vest in the Company upon creation. At the request and expense of the Company, the Employee will execute such further documents and do all such acts as may be necessary in order for the Company to prove or defend its intellectual property rights, to perfect the vesting of such rights in the Company
and/or to secure appropriate forms of protection for the rights in any
part of the world. The Employee hereby grants to the Company an
irrevocable power of attorney to sign all necessary documents to give
full force and effect to the above clauses. The Employee being
the moral author of any such works hereby irrevocably waives the
Contractor right to be identified as the author of the works conferred
on his/her by Chapter IV of Part 1 of the Copyright, Designs and Patents
Act 1988 headed “Moral Rights” and any other laws of a similar or
equivalent nature in any of the countries of the World. The rights and obligations created in this clause shall remain in force after termination of this contract.

From what I can make out this gives my employer sole rights to everything I produce during my time employed by them. Would this include code written by me outside of the hours I’m working for the company? Would it include code I’ve written outside of work and then used within their product?

I’m a little worried about signing a contract which could result in my employer claiming rights over my business startup which I am creating in the evenings. Have you all signed similar clauses in your own contracts?

[PhilW (Philip Wattis)]

If you’re really concerned I’d seek legal advice, personally though I wouldn’t worry too much.

The Employee hereby assigns to the Company with full title guarantee all vested contingent and future rights in any works created by the Employee during the course of his or her work for the Company

See the bit of marked in bold. I think this is the important bit which works in your favour. Anything you do that is not ‘work for the company’ and done in your own time does not apply. After all, they don’t own you, even if they think they do.

Another approach would be to voice your concern to the company before signing it. If they tell you its nothing to worry about, then cross it out before signing. See what response that gets! From my very limited knowledge, such terms in employment contracts are rarely enforceable if you’ve generally acted reasonably.

[wprk (Will Parker)]

Ye that’s what I thought when I read it but then the bit below scared me a little. I’ll raise it with my boss anyway he’s pretty sound so sure he’ll be understanding.

The Employee hereby grants to the Company an
irrevocable power of attorney to sign all necessary documents to give
full force and effect to the above clauses.

[wallmari (Richard Wallman)]

That just means that the company doesn’t have to wait for you to sign any documents transferring the copyright ownership - they can write a document saying “I hereby grant full ownership of libfoo to WonderCorp Ltd.” and sign it on your behalf.

Depending on what you’re working on and the nature of the employment, the waiver to the moral right to be identified as the author of the work could be the only cause for a conversation. If you’re a freelancer or contractor, and you may want to reference this job as part of your portfolio (especially if some of the work will involve Open Source Software), this waiver means your name could/would never be attached to the work. This can make it tricky to provide evidence to future clients/employers about the work you’ve already done - you can tell people you developed a certain feature or block of code, but unless your boss is willing to (unofficially) back you up when providing a reference, you can’t actually (legally) prove it.

Generally, though, this looks like a standard employment contract term, and I wouldn’t worry about it.

(it could be a lot worse - I’ve signed NDAs which prevent me from even saying who I’ve been working for, which leaves nasty gaps)

[LimeBlast (Daniel Hollands)]

I’m a little worried about signing a contract which could result in my employer claiming rights over my business startup which I am creating in the evenings. Have you all signed similar clauses in your own contracts?

I had a similar question relating to my contract for working with Foxsoft. Specifically it says:

You will give the Company full details of all inventions that You make during your period of employment with the Company that could be used in the Company’s business.

In talking with @elaptics about this, we’ve decided that the stated “period of employment” refers to my time at work, working on client projects, etc… and not my own stuff I work on in my own time (such as Unknown Tales).

[Woo (Andy Wootton)]

I’d be very worried by both of those. It is perfectly reasonable to surrender copyright of any code you write while being paid by a company. If you keep copyright, you should expect to be paid less.

It is not unreasonable that while working in the employment of a widget factory and learning widgit making secrets, if you think of a better way to do it, you are not permitted to go off with your invension and start a competitor. You owe it to them to hand over your good ideas as well as your bad ones. But: if in an idle moment on the widgit line, you think of a better mousetrap, as you might at home in the bath, I’d want that invention to belong to me.

The contract is probably sloppy rather than cunning, so I’d ask for minor changes. I’ve done it several times when I was contracting. You’ll probably be told that it must be OK because noone else has ever questioned it. Point out that they are employing you for your excellent attention to detail. If they refuse, it is deliberate.

I’ve known people have contracts that say they can’t do outside work. When challenged they say they can, as long as it doesn’t affect their work (I assume they mean -vely.) I’d want that changed too. In disputes, these odd little clauses can cost you your job, or your redundancy payment.

[PhilW (Philip Wattis)]

It is not unreasonable that while working in the employment of a widget factory and learning widgit making secrets, if you think of a better way to do it, you are not permitted to go off with your invension and start a competitor. You owe it to them to hand over your good ideas as well as your bad ones.

I didn’t read that particular extract to mean that - but it might, and such restrictive covenants are quite common in contracts of employment, but usually unenforceable, providing you are not obviously breaching said company’s confidentiality. An employer cannot lawful prevent you from plying your trade and deploying your skills, even if they were skills you acquired while under their employment.

The contract is probably sloppy rather than cunning, so I’d ask for minor changes. I’ve done it several times when I was contracting.

Agreed. Drafted by lawyers without anyone at the company actually understanding its implications.

[Woo (Andy Wootton)]

@PhikW Yes but would you want to be fighting a 2 year court case with a bigger company while trying to get a new business off the ground. I think there’s “legal” and “right” too.

I had a 3 month notice period for several years but was told that since I was paid monthly, it was legally unenforceable. I’d still have felt professionally obliged to have complied, even though it had been retrospectively applied. If I didn’t fight it at the time, I considered myself stuck with it.

[sil (Stuart Langridge)]

we’ve decided that the stated “period of employment” refers to my time at work, working on client projects, etc… and not my own stuff I work on in my own time

Man, I’d ask that question. Don’t just assume. It is completely unreasonable for a company to claim that anything you think of in the shower that they could use thus belongs to them, but that doesn’t stop people doing it; I don’t think that that’s what @wprk’s employer is doing, but I am quite a bit more worried about @limeblast’s.

(Also, all this applies to permanent employees. Freelancers and contractors have to be quite a lot more careful about this stuff.)

[LimeBlast (Daniel Hollands)]

Man, I’d ask that question. Don’t just assume.

Seeing as @elaptics is my new boss, that’s exactly what I did - the ‘we’ was @elaptics and I.

[PhilW (Philip Wattis)]

I had a 3 month notice period for several years but was told that since I was paid monthly, it was legally unenforceable. I’d still have felt professionally obliged to have complied, even though it had been retrospectively applied. If I didn’t fight it at the time, I considered myself stuck with it.

I understand that sometimes it’s not worth the fight. This is a different area of law though and sounds like wrongful dismissal. If I was on the receiving end of this I’d go down the route of an ACAS tribunal. I’ve been on both sides of the table for such things, and believe me, as an employer you just want to make it go away. Then again, you get some particularly vindictive employers who’ll spend more money trying to avoid paying you than what you’re rightfully owed.

[sil (Stuart Langridge)]

Seeing as @elaptics is my new boss, that’s exactly what I did - the ‘we’ was @elaptics and I.

Ha! Didn’t realise that.

[Woo (Andy Wootton)]

@PhilW It didn’t happen. I always assumed it was because they’d worked out I was indispensable after I was off sick and they had to replace me with a very expensive contractor but I’ve just realised it was when I worked in energy trading. If a trader resigned, they’d be sent straight home on 3 months garden leave so they’d be unaware of the current trading position when they inevitably started work for a competitor. My contract was just a side effect

[PhilW (Philip Wattis)]

I’ve had a similar thing happen in my younger years at a company that would be well known on this board. I handed in my notice and was immediately sent on ‘gardening leave’. The company then took the liberty of subtracting the gardening leave days from my remaining holiday entitlement before calculating my final pay packet. I’m not going to name them, as it happened 20 years ago and I doubt I could muster the paperwork as proof should someone want to shout ‘libel!’

I had grounds to fight it, but had more important issues to deal with at the time.

[RobGilliam]

The company then took the liberty of subtracting the gardening leave days from my remaining holiday entitlement before calculating my final pay packet. I’m not going to name them, as it happened 20 years ago and I doubt I could muster the paperwork as proof should someone want to shout ‘libel!’

It’s not unusual for companies to reserve both the right to send an employee on garden leave and the right to have an employee use up their holiday during their notice period (even if on garden leave) in their contracts of employment.

Where this is not the case, it’s usually down to negotiation between employer and employee how much of their notice period they will actually be required to work and what they will be paid for. In any case, the law allows employers to force employees (not just those leaving the company) to take some or all of their holidays at times to be determined by the employer, provided sufficient notice is given (being twice the period of leave to be taken, e.g. can force you to take a week’s leave provided they give you two weeks’ notice)

[PhilW (Philip Wattis)]

Where this is not the case, it’s usually down to negotiation between employer and employee how much of their notice period they will actually be required to work and what they will be paid for. In any case, the law allows employers to force employees (not just those leaving the company) to take some or all of their holidays at times to be determined by the employer, provided sufficient notice is given (being twice the period of leave to be taken, e.g. can force you to take a week’s leave provided they give you two weeks’ notice)

Accepted. And had any such discussion actually have taken place, or if it had been set out in my contract of employment or employee handbook, then I’d have been less surprised when my final pay check was several hundred pounds light. Had I actually have known, I may well have gone on holiday! Instead I was ready and willing to answer any questions they may have had about the project I had been working on (being the only person who knew anything about it).

Hey ho! Left a very bad taste in my mouth from an employer who had actually been quite good to be honest.

[GregRobson]

The general principle I always go by is:

• If you make a little open source library to help with a project, but any of this on work’s time - the company owns it.
• If you make the library on your own time, but use it at work, they can’t do a thing.

Always be careful - timestamps on commit logs may indicate that work was done on company time.

If you have an amazing idea, wait until you leave your employer

[Steve_Pitchford]

If you make the library on your own time, but use it at work, they can’t do a thing.

I’m not a lawyer, but would consider this to be an extremely messy situation to get out of. If you do something so applicable to work that you use it in work, trying to subsequently claim the nature of any possible unpaid overtime associatted with said activity seems questionable in the extreme.

I think a simple rule of thumb for harmonious employer-employee relationships is not to do something that could be seen to compete with your employer or conflict with their interests in your own time, whilst employed by them.

[GregRobson]

Just to clairfy @Steve_Pitchford - I’m considering the case of making something that isn’t directly related to work and is non-competitive with the employer’s interests. Plucking an example out the air something like the Carbon date library for PHP - it’s very generic, isn’t really worth claiming a patent or trademark for it.

Obviously you should never use the “I’m a great employee, look at what I did in my spare time” as a bargaining chip - that’s your own choice, you can’t claim it adds value to your services if the company is conducting redundancy reviews.

As an employer I would always advise that any external Git repositories maintained by employees are cloned - preferably to an account that the employee has no control over. You never know…