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   Is this Right..?
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   Author  Topic: Is this Right..?  (Read 2560 times)
Spritetech1
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Is this Right..?
« on: May 19th, 2006, 1:35pm »
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I recently contracted (verbal) with someone to do some programming_systems integration things on some code that was already compiled and working. Long story short, this person was paid in-full, then decided they were going to not return the sourcecode to my company. Unless, I pay an additional amount (tens of thousands of dollars) for the sourcecode I sent them to work on.
 
what if any advice is there..?
 
Thanks,
 
Starior
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JimIvey
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Re: Is this Right..?
« Reply #1 on: May 19th, 2006, 2:54pm »
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Just to pick a nit here, "verbal" can mean spoken ("oral") or written.  I'm assuming you mean "oral" instead of "verbal."
 
I'm guessing you didn't say anything about who owns what in your oral contract.  
 
Is the issue that they have the only copy of the source code and you don't have access to your work product?  Or that they have a copy of your source code at all and shouldn't?
 
If the former, I'd say they're pretty clearly in the wrong -- based on general notions of copyright ownership.  They would generally not have any ownership rights in your software development work until your contract specifically stated to the contrary.  
 
If the latter, you're in a tougher situation.  Oral confidentiality agreements are enforceable, but you're going to have a hard time proving exactly what they agreed to with respect to what they're allowed to do with your work product.  Did you specifically condition your work on their keeping your source code confidential and returning all copies upon termination of the contract?  That would have been a nice thing to have written down, but if you have some corraborating evidence of what you agreed to orally with respect to that issue, that would be helpful.
 
One trick attorneys use is to "memorialize" or repeat/summarize things discussed orally in letter form.  Of course, e-mail is a much more innocuous way of doing that.  You can write little e-mails back and forth and put little comments in there expressing your understanding of your deal.  Things like, "Hey, I'm looking forward to implementing the changes we discussed yesterday.  I should be able to get started soon.  I'm pretty sure I'll be able to port our source code over there and keep track of it so we can avoid leaving you with our confidential stuff on your computer, including all the little tricks and twists we end up putting in there for your use.  I'm sure you don't want the headache of other people's property littering up your system(s).  Best regards, Joe Software Contractor Guy."
 
See?  Innocuous, yet a little "paper" trail of what you really intended by your representation.  You see, attorneys are professional paranoids and it helps sometimes to be paranoid -- and leaving little prophelactics around to trip up those who are the subject of your paranoia.
 
Regards.
 
P.S.  I think I got the roles here reversed.  I assumed the poster was the contractor.  I think Isaac's post below is on point -- at least he got the facts right.  If the agreement didn't include giving you the source code and you don't have proof of that, you're going to have a hard time getting it.  Your best bet is to prove that what you paid the contractor for would be entirely useless without the source code so providing a copy of the source code would have been a requirement of any reasonable contract.  That may be a stretch but may be your best bet.
« Last Edit: May 19th, 2006, 9:47pm by JimIvey » IP Logged

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James D. Ivey
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Isaac
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Re: Is this Right..?
« Reply #2 on: May 19th, 2006, 3:05pm »
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Fascinating question.  
 
Verbal software development contracts are generally a bad idea for all parties.   A major issue is that some rights under copyright law cannot be transfered without a writing.  This case presents a particularly muddled case because the modified work is probably a derivative work.    
 
I see the issues to be settled as who owns the copyright in the derivative work, and what ownership rights do each of the parties own in a physical copy of the derivative work.
 
As for the ownership of the copyright, the developer needs permission of the original copyright holder to make a deriviative work.   He has some kind of permission, but most likely the scope of the permission would not allow him to distribute the derivative work or make copies of it other than to fulfill the contract.  The owner of the original work has a copyright interest in the portion of the derivative work belonging to him.  But no interest in any separable part of the derivative work created by the developer unless there is a transfer of rights or a license.  Unfortunately a transfer requires a writing and there is none.   If there is a verbal license, it might be limited to getting an executable.
 
As for the physical copy of the derivative work, well maybe that was part of your verbal agreement, but maybe that did not include any source code.   I don't know what you agreed to.
 
At the risk of lecturing, negotiations for source code are best performed up front and captured in writing before development starts.   It just is not clear what you paid for or what a court might order the developer to give you.  As an example issue, sometimes a developer will use code whose license does not allow him to give third parties the sourcecode.    If the developer knew up front he was going to have to pony up source code, he might charge more and take a different approach.    
 
Resolving copyright issues with contractors after the work is completed can be expensive and that doesn't apply solely to software development situations.
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Isaac
Spritetech1
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Re: Is this Right..?
« Reply #3 on: May 19th, 2006, 5:03pm »
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Thanks all,  
very important input, all which helps me a great deal. As far as I can tell, I have a very sticky situation here. I guess the first rule is, never trust anyone to do work on something without writen contract(s) software hardware or other wise. I guess I have no protection under the law (clearly not knowing what the law could be) and may have paid someone to steal my work.?   This is a programmers nightmare.
 
Thanks,
 
Starior
 
PS.
Excuse my ignorance in this fourm, and I don't mean to vent, but...
 
I (the person to post this question) am the owner of the original sourcecode. The person to help, was the one (friend?) paid to assist in building add-ons or Mod's for the original source code. This is what I want to get clearity on, is it right to do this. I mean get paid to do a job, and then keep, the original product.? And hold it for more then what was agreed to.? It's this that confuses me to no end. Where is the honesty in people. If I have no recourse, or no protections, with email that speak directly to what was owned by my small company, and he just walks with my code, which took me more then five years to build, line by line. Well, it is this which is most disturbing.  Huh
« Last Edit: May 19th, 2006, 10:35pm by Spritetech1 » IP Logged
JimIvey
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Re: Is this Right..?
« Reply #4 on: May 19th, 2006, 10:14pm »
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First, I think I got the facts wrong and tried to save my earlier post with a P.S.  Kinda lame, sorry.
 
Second, you're right, ownership rights in software can be a big nightmare, especially if you just trust the other party to be reasonable.  It's not that the other party won't be reasonable but rather that you're really assuming that, after the fact, you'll both have the same perception as to what's reasonable.  
 
Look at the source (not source code, but rather genesis) of any piece of software that's any more complex than a bubble sort or listing of prime numbers, and you'll see contributions from probably no less than a dozen entities -- big projects may have hundreds of individuals contributing over many years.  The law takes its best guess as to what's right vis-a-vis software ownership rights -- but it paints in broad strokes hoping that specific deviations of what's really right from the law's default best guess are sorted out in contracts.  
 
I suppose that, in a way, it's like intestate succession (inheritance without a will).  There's a basic generic formula and, if you like it or -- more commonly -- you just don't care who gets what, you're free to rely on the law's default.  However, if you have any specific intentions, you really need to spell them out in writing.
 
Getting back to your problem, it sounds like you authorized the guy to make a derivative work of your software.  I think Isaac's right that he doesn't have the right to sell extra copies of that software to others, but I suspect your issue is more about how to make subsequent modifications and/or repairs without the source code (I'm guessing he gave you object code and/or an executable -- probably even installed it in your system).  In  particular, I think you wanted/expected unlimited rights to make derivative works of his derivative work.  I'm trying to give the contractor the benefit of the doubt, but I'm having a hard time trying to see how he could reasonably think that you were hiring him to be your sole source for all future enhancements and bug fixes at terms to be specified in the future.  To be honest, something just doesn't smell right here.  
 
I don't know what the default is in that situation -- wanting to be able to make unlimited derivate works of someone else's derivative work of your original work, but it would certainly have been better to have something in writing.  You may still have a decent shot at this in court -- due primarily to your need to maintain the software and perhaps to maintain your own trade secrets in your original source code -- to prevent him from using your trade secrets.  I think it would help if your source code had some comments in there about copyright ownership and confidentiality.
 
Is it many tens of thousands of dollars?  My very rough guess is that you may get into a few tens of thousands of dollars to get a court to force him to give you your source code back.  Then again, maybe if you just ante up, he may fold (to use the over-used poker metaphor).  I don't know your contractor, but many software people talk big about legal rights but get really scared with they see their own name in real court documents.  You might get your problem solved fairly quickly and fairly inexpensively.
 
Good luck.  Sorry for rambling aimlessly.  Hopefully, I touched on a few useful thoughts.
 
Regards.
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James D. Ivey
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