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I have an Invention ... Now What?
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   Who owns the software
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mofforwe
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Who owns the software
« on: Oct 27th, 2004, 10:03am »
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I work for a major Canadian financial institution in the IT  
department. Late 2003 one of the company's departments, lets call it Dept-A, had a requirement to move off their current UNIX hardware due to end of lease and on to a Windows environment. The deadline was March 31, 2004. If this deadline was to be broken a substantial penalty would have been incurred.
 
Our group was asked to provide a solution. An outside vendor was asked to come in and testing of their software solution commenced.  
In January 2004 Dept-A determined that the vendor's solution was not acceptable and a few other options were discussed but they too were not acceptable.
 
Although I work for this company I also have my own registered company. I proposed an alternate solution to Dept-A and they accepted it. The proposal was for me(my company) to write a program that would permit them to migrate seamlessly from the unix  
environment to Windows by March 31, 2004. They were told that the code would be mine and that I would have to be paid a license fee.  
 
I commenced work in mid February and successfully meat the deadline of March 31st. I did all the work on my own time and off company premises.  
 
My client (Dept-A) during initial discussion said they would pay me for a license to use the software as  
they would have with any other vendor but now I am being told by my the company's lawyers that that since I do not have anything in writing the company has no obligation to me for license nor overtime.
 
All I have is an email from Dept-A confirming that they agree to my terms.
 
I was told that I used company propriety information and that creating utilities are a part of my duties and that The company insist that they Own the code, I am not allowed to sell it, they are not liable to me for any form of compensation for the code nor overtime while developing the code.
 
My duties does not include programming. I did not have a written contract except for that email confirming that they aggree to my terms of payment and ownership.
 
Based on the information above do you think I have a case to ownership of the software?
 
thank you,
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JSonnabend
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Re: Who owns the software
« Reply #1 on: Oct 27th, 2004, 12:08pm »
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Unfortunately, there are not clear answers to your inquiry.  
 
First, on the ownership issue, you have some apparently good arguments why the program was written outside the course of your employment, and so is not a work made for hire.  If you prevailed on this issue, you should be able to sell or license the software to third parties.
 
Second, on the license fee, assuming you could adequately demonstrate that the company agreed to pay you the license, you should be able to prevail on a contract law claim.  The outcome of the ownership issue may affect this issue as well, of course.
 
The foregoing is based on U.S. copyright law and on general principles of contract law, which may vary state by state.  I can't tell you anything specific on Canadian law.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
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JSonnabend@SonnabendLaw.com
Isaac
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Re: Who owns the software
« Reply #2 on: Oct 27th, 2004, 4:34pm »
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I think Jeff has the big picture laid out pretty well.  I'll
just mention some little picture stuff.
 
What you are up against is work for hire which would give the
employer the copyright.  If the company can successfully argue that
the work was done by an employee within the scope of his employment,
then they still have to counter the apparent evidence that
they agreed to do otherwise.  The company may elect to argue
either than the email is insufficent to overcome the work
for hire or that the person who authorized the purchase did
not have sufficient authority to transfer the company's right
in the software to you.
 
Quite frankly, I would not think much of an employer who
treated its employees in this way.
 
Oh, yeah.  Even if the company's trade secrets were involved
that does not seem to me to be a strong argument that the
company owns the software.  Wouldn't they have revealed those
same trade secrets to anyone that they contracted with to
implement your solution?
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Isaac
mofforwe
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Re: Who owns the software
« Reply #3 on: Oct 28th, 2004, 7:57am »
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Hi Jeff, Isaac
 
Thanks for responding to my query. I am disapointed in this company to say the least.  
 
If anyone else has any insight on Canadian copyright law regarding this issue I would appreciate it.
 
Mofforwe
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