The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Feb 26th, 2021, 11:49pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
   Other
   Copyright Forum
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Software Copyright Ownership Disarray
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Software Copyright Ownership Disarray  (Read 1762 times)
ornack
Newbie
*




   


Posts: 2
Software Copyright Ownership Disarray
« on: Jun 15th, 2007, 11:41am »
Quote Quote Modify Modify

This is a long story but I'll try to make it as short as possible.
 
I am 1/3rd owner of NewCo and a software/web developer.
 
We hired a developer, Developer-A, to give us a jump-start start our web site
Developer-A delivered the web site but has not signed a "work-for-hire" agreement.
We then hired Developer-B to work on the web site and he signed a work-for-hire releasing rights over to NewCo.
I have since taken over development and the source code is hardly recognizable from either of the original developers.
 
It is my understanding the work I performed does not classify as a "work-for-hire" situation (since I am an owner of, not an employee for, NewCo and there is not explicit agreement stating that my development rights transfer to NewCo).  As such, it is my position that whatever development I did belongs to me personally as the author.
 
Who owns what?  
Is the program, in it's current state, considered a derivative work?
Theoretically, could I rollback all the work I have done and say everything else belongs to the company and walk-away?
 
Given NewCo's internal conflicts and likely dissolution in the near future, sorting this IP mess out has become imperative.  It might be time to get an IP lawyer, but wanted to run it by the forum first.
 
Thanks,
Ornack
« Last Edit: Jun 15th, 2007, 11:45am by ornack » IP Logged
mactheknife
Full Member
***




   


Posts: 110
Re: Software Copyright Ownership Disarray
« Reply #1 on: Jun 16th, 2007, 7:26am »
Quote Quote Modify Modify

My advice would be, talk to a lawyer in person.  (Sheesh I sound like a broken record from last post, but whatever...  Grin)  I assume you'll be getting a lawyer to work through your dissolution, if they have any experience in the software industry they'll know a little about IP (or know to contact someone else who does).
 
In general, a work made for hire is a (1) work prepared by an employee within the scope of his employment, or (2) a specially commissioned work in certain instances.  Just because you're an owner doesn't mean you can't be an employee.  The copyright law looks at several factors, the most important of which are tax treatment and benefits.  As to scope of employment, you're looking at things like, did you use NewCo's equipment, on NewCo's time, etc.  If these are met, it doesn't matter whether you have signed a "Work for hire" agreement or not--it would be considered a work made for hire and NewCo would be the author.
IP Logged
Bill Richards
Full Member
***




   
WWW Email

Posts: 758
Re: Software Copyright Ownership Disarray
« Reply #2 on: Jun 16th, 2007, 7:47am »
Quote Quote Modify Modify

The way I see it, your ownership problem transcends the "work-for-hire" and employee issue.  You probably have a fiduciary duty to NewCo and to the other owners.  The attorney you consult regarding the dissolution should be able to work that angle for you.
Will you have your own attorney during this dissolution?  If not, you might want to consider engaging one.  You need an attorney of whom you are the client, not the shareholders in general.
IP Logged

William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
ornack
Newbie
*




   


Posts: 2
Re: Software Copyright Ownership Disarray
« Reply #3 on: Jun 19th, 2007, 10:14am »
Quote Quote Modify Modify

Perhaps I complicated matters by mentioning the dissolution and internal conflicts.  At its simplest, when it all boils down, can I file a copyright for my portion of the software as an original or as a derivative work?
 
As a guesstimate, I personally created about 95% of the software, with the other 5% created by Devs A and B.
 
mac - I'm pretty sure I'm not an employee.  I didn't fill out a W4, I don't receive a W2, I haven't filled out an employment agreement, and our LLC Operating Agreement is silent on this issue.  If there is some sort of implicit/de facto employment arrangement, then I am unaware of it.
 
Bill - All members have agreed that we each will have our own representation if a dissolution were to occur.
 
Thanks for each of your replies.  Any additional perspective is always welcome.
 
ornack
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: Software Copyright Ownership Disarray
« Reply #4 on: Jun 19th, 2007, 12:29pm »
Quote Quote Modify Modify

on Jun 19th, 2007, 10:14am, ornack wrote:
Perhaps I complicated matters by mentioning the dissolution and internal conflicts.  At its simplest, when it all boils down, can I file a copyright for my portion of the software as an original or as a derivative work?

 
Few things get more convoluted than ownership of software when things aren't handled in writing.   Toss in a business dissolution, and work for hire and you get a complete quagmire.   Let me expand on some aspects just enough so that you can appreciate why you won't get a complete answer in an open forum.
 
First, with respect to contracting out a work for hire, software is a type of work for hire for which things are difficult.  In addition to the criteria recited by mactheknife, for a contracted out work to be a work for hire, it has to fit into one of the 8 or 9 enumerated types in the statute.   In most cases, software doesn't fit any of those enumerated types, and thus attempts to make contracted out software a "work for hire" may fail.   Successful work for hire contracts include a back up clause requiring an assignment if the work for hire clause fails even though the assignment is slightly less desireable than work for hire.   Don't know if your contract covered this issue.
 
Second, Bill has a good point concerning your fiduciary duties.   You may be the copyright owner of some portion of the code you wrote, but your participation in the joint endeavor may limit your options.   Assuming there is no agreement to the contrary, state law determines how former partners split up business assets after dissolution.  
 
Thirdly, it seems likely to me that if you wrote 95 per cent of the existing code, that at least a portion of the code is yours (absent work for hire consideration), but it may not be clear exactly how much is yours.  Your code was design to work with the other 5 per cent and may contain things copied from and derivative from the 5 per cent.   If you register the work as a derivative work, you may not have complete control over that portion of the work, particularly if it is essentially inseparable from your own work.
 
Finally, with regards to whether you were an employee, the W4/W2 stuff may be tail wagging the dog.   If the facts indicate that you were an employee then  you weren't using the right tax forms.   You really cannot use the tax forms as dispositive of the issue of whether you were an employee.
 
Sorting things out without reviewing with a lot more detail than ought to be discussed in an open forum isn't going to give an accurate result.
« Last Edit: Jun 19th, 2007, 12:30pm by Isaac » IP Logged

Isaac
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board