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Author Topic: Who owns Unpaid "Work For Hire"  (Read 3837 times)

Rob G

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Who owns Unpaid "Work For Hire"
« on: 09-22-06 at 09:08 am »

I work with a small team of independent software developers.   Each of us signed a “Work For Hire” contract with a customer.  The customer paid us for the first three months, then failed for pay for the final three months.    At this point, who owns this software?
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biopico

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Re: Who owns Unpaid "Work For Hire"
« Reply #1 on: 09-22-06 at 10:14 am »

Work for hire doctrine:  A customer owns the software.
The customer failed to compensate you, breaching your contract.  Depending upon how much money is involved, you might want to talk to an attorney to evaluate whether it is worth going forward filing a complaint in a court of law unless you proceed pro se.

You need to talk to a labor and employment attorney regarding breach of contract.  30 min free consultation available?
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JSonnabend

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Re: Who owns Unpaid "Work For Hire"
« Reply #2 on: 09-25-06 at 07:35 am »

Software "ownership" is a bit more complex than Biopico's analysis would have you believe.  

First, it is unclear whether "work for hire" by written agreement would apply in your case.   Depending on how the contract is drafted, and on other factors, the customer may have a license in the software nonetheless.  

Second, assuming you retain copyright authorship (which is different than "ownership"), you might have some practical rights in the software from a business perspective.

Finally, I'm not sure where Biopico gets the "labor and employment attorney" from, but he's wrong.  Any qualified litigator can handle breach of contract matters, although you'll likely want one who's well versed in intellectual property as well.

- Jeff
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biopico

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Re: Who owns Unpaid "Work For Hire"
« Reply #3 on: 09-25-06 at 08:09 pm »

The main interest of Rob G, as far as I understand, is to get compensated.

This is a breach of employment contract.  Labor and employment lawyers specialize in the matter of employment.

Ownership is one thing and authorship is another.  

Please note:  JSonnabend's rate is very very reasonable based on my legal experience.  Thus I would recommend to contact him for consultation.

 
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Isaac

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Re: Who owns Unpaid "Work For Hire"
« Reply #4 on: 09-25-06 at 08:18 pm »

The developer here appears to be a contractor rather than an employee.   Once that threshold issue is resolved the remaining issues appear to be a garden variety service contract overlayed with copyright related issues.  You really don't need an employment specialist here.


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Isaac

biopico

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Re: Who owns Unpaid "Work For Hire"
« Reply #5 on: 09-25-06 at 08:51 pm »

Dear Isaac:

In academia and sort of academic environment, it is pretty common that employees (postdocs, scientists, etc) sign the documents waivering the rights of ownership of any invention during employment, which is commonly viewed as "work for hire" doctorine.

This is where serious conflicts between scientists do occur.    

Now how do we draw the line of IP between employers and employees (biologists, chemists, engineers, and physicists, etc)?

I would appreciate it if you or anyone can please provide us any information regarding this issue.

 

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Isaac

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Re: Who owns Unpaid "Work For Hire"
« Reply #6 on: 09-25-06 at 09:48 pm »

Quote
Dear Isaac:

In academia and sort of academic environment, it is pretty common that employees (postdocs, scientists, etc) sign the documents waivering the rights of ownership of any invention during employment, which is commonly viewed as "work for hire" doctorine.


You are confused about what "work for hire" means.

Under US law, work for hire is purely a copyright concept and is established by federal statute.  Under the statute, employees and contractors are treated differently.

There is no "work for hire" with respect to patents, trademarks, or trade secrets.

For patents, the default is that the invention belongs to the inventor.   That default can be modified by contract and can also be modified in the case of an employee hired to invent.    There may also be limits in a given jurisdiction as to whether a contract is effective in requiring assignment of non-work related inventions.

For an employee, there can be employment law related aspects to the question of who owns what, particularly when something other than copyright is involved.

« Last Edit: 09-25-06 at 11:27 pm by clarklawyer »
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Isaac

biopico

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Re: Who owns Unpaid "Work For Hire"
« Reply #7 on: 09-26-06 at 06:39 am »

Dear Isaac:

Thanks much for your response.  It is very provocative and thus I'd like to try to get more insight/information from you.

Here is a hypothetical situation (rampant).

Research proposals are submitted to Federal Government to bring in multimillion dollars, the proposals of which might/could/would lead to inventions leading to patents.

When the person A is an inventor based on the work s/he developed, the work of which had been included in his/her own independent grant proposal.

When the person A is trying to move to another institution in the US, a common dispute arises between the person A and his/her current employer regarding "who owns what".

The problem is that employers are not necessarily following the rules and guidelines in compliance with the requirements of Federal Funding Agencies.  Thus the problems get even more complicated.

One of the most common defense from the employer is "Work for hire doctorine", which appears to be an inappropriate reason to potentially defraud employees.

For example, employer will tell you that you were hired to do the work and thus you leave everything here.  You surrender everything you developed independently and leave to move on.

Any input would be very much appreciated.  



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Isaac

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Re: Who owns Unpaid "Work For Hire"
« Reply #8 on: 09-26-06 at 07:14 am »

Quote
One of the most common defense from the employer is "Work for hire doctorine", which appears to be an inappropriate reason to potentially defraud employees.


I would suggest that when the employer says "work for hire doctrine" the employer is improperly using a legal term of art.   However the employer may be correct about the ownership of the work.

Generally, to determine who owns an invention made by an employee, I would first look to the signed agreements between employee and the employer.   As long as the work was within the scope of employment, it is likely that the agreement is completely effective in obligating the employee to assign any patent rights and in obligating the employee to cooperate in filing patent applications.  (Assuming a competent drafting)

Absent a written agreement, I would look to see if the employee was hired or assigned specifically to invent.  The details of the inquiry might depend on state law with some states favoring awarding ownership to the employer in most situations.

There may be additional inquiries when the federal government has a stake in things, but that's beyond the scope of my personal expertise.
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Isaac

JSonnabend

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Re: Who owns Unpaid "Work For Hire"
« Reply #9 on: 09-26-06 at 08:42 am »

Quote
This is a breach of employment contract.  Labor and employment lawyers specialize in the matter of employment.

To be clear, this is not an "employment contract" according to the facts outlined by the OP.  Isaac is correct in his characterization, as far as I read the facts.

- Jeff
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bmore

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Re: Who owns Unpaid "Work For Hire"
« Reply #10 on: 01-09-07 at 11:54 pm »

Sorry if I bother anyone by digging this up, but I am in a similar situation with one big "gotcha".

I had worked on a website for a client while freelancing, but in my youthful exuberance never had a formal contract.

I do have one successfully paid invoice showing rate and some basic terms, however after that invoice the client has refused to pay, claiming the "entire site had to be redone", however my unpaid work is STILL present.

I have since used the same code in future projects, and I want to make sure that if I go after them to recover the unpaid invoice, I won't get myself in trouble with my later use of the work.
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JSonnabend

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Re: Who owns Unpaid "Work For Hire"
« Reply #11 on: 01-10-07 at 08:06 am »

Based on your recitation of the facts, the work you did was not a work for hire.  That doesn't mean the recipient doesn't have some rights in the work under license theory, but that shouldn't stop you from seeking payment in and of itself.

One route you might try is to send a DMCA takedown notice to the ISP/host of the site.  You also might consider registering your copyright in the work.

- Jeff
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SonnabendLaw
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