Help with a copyright clause in employment agreement

[diy]

I was involved in the acquisition of a company a few years ago and it turned out a couple of their software developers had not assigned IPR to their employer (this was US). We wouldn't complete without that being fixed. In the end they walked with a couple of million each for fixing that commercial oversight. I remember the CEO going mental at the thought of losing the deal. But without clear ownership of their IPR we were paying for nothing more than some paper and logos.

I think as has been said its reasonable to restrict this to in the course of your employment. If that is not sufficient for them consider a non-exclusive, royalty free, assignable perpetual license to use.

You might also want to look at what this is worth to you. The fact they are in conversation with you and looking for retrospective assignment makes me wonder if this isn't hampering a deal that they have on the table.

You should also be aware that you cannot give them that which you may have already given away.

[dls]

It is proper for an employer to make a request for such a clause. DIY points out why.

In the absence of an agreement, both the company and you are in difficulties. If you create something there is a very clear risk that it belongs to them. The lines are not clear.

It is right that the employer should list those areas to which the clause should apply. It might be easier if you clarify those things outside your work for which you want exemption.

Either way get it resolved quickly cleanly and agreeaby.

[sugarflux]

Thanks for all the discussion. Some good ideas and things for me to think about. I totally agree that an agreement of some kind needs to be in place for protection on both sides but the particular contract that's in front of me is completely one-sided. Basically anything I write, design or even conceive would technically belong to the company.

They have now got back to me stating "I don't think we will ever be able to agree a form of words that provides the protection for *** the company *** and gives you what you want" so they are thinking of adding a clause that requires employees to get prior approval before embarking on each piece of non-company related work.

This could get very silly depending on how they go about wording that. I wonder if I'll need permission for that bathroom wall I need to tile at the weekend?

All joking aside I have worked for companies in similar fields for almost two decades now and there has never been such a problem before with the company wanting to own everything that its employees creates.

~S~

[dls]

Be careful. They may already own far more than would seem obvious. It need not be about moving the boundaries but is more about clarifying them.

[sugarflux]

They've come back offering the following:

4.1 The Employee hereby assigns to the Company by way of present assignment of past and future copyright (to the extent not already vested in the Company by operation of law) all copyright, design rights and other proprietary rights (if any) for their full terms throughout the world in respect of all copyright works and designs originated, conceived, written or made by him/her alone or with others during the term of his/her employment which relate, or could relate, to the business of the company, including any works generated outside office hours or at home. Note that to avoid any doubt as to whether any non-company work being contemplated by an employee could be related to the business of the company, any employee seeking to carry out such work should seek written confirmation from his or her line manager prior to commencing the work.

I'm still not clear on "the business of the company" as it's not mentioned anywhere. Also if there is a piece of work that could potentially relate to the business of the company (whatever that is), this amended clause still provides no way of excluding the clause - even with written consent.

Am I misunderstanding this or being run round in circles...?

Obviously not asking for any advice but interested to know what others on here might do in this situation...

Thanks again for all your input

~S~

[dls]

The definition of business activities will always be very wide, and properly so. It will also change over time.
It will include not only the actual business but also all the processes involved in managing the business. Everything from designing web-sites to ordering toilet rolls.

You need also to acknowledge that the definition will have to change over time.

I see little practical alternative to you establishing a list of individual past projects for which you seek clarification, and a process of updating that list from time to time.

As I say, look at this as a process not of them acquiring control, but of accepting that the likelihood is that much already belongs to them under general law, and that this is a process of you recovering and preserving rights.

[diy]

Certainly seems a reasonable request and as DLS says the nature of you being an Employee probably means they own much more than you think. You should consider it a privileged that they accept you working outside the company and allow you to do so. Many employers would rightly question outside business as a distraction and blurring of priority. Its reasonable as a full time employee for them to ask you to declare this.

If, as I suspect this is blocking a bigger deal, be careful also that in protecting your future rights you do not make your continued employment by the company a problem.