I created product on the side as a side project in my own time and it has become a huge hit in the community to a point where my employers wants me to transfer the code-base over. The company does OSS and my side-project is also Open-Source.
I've developed it on my own time but the product directly relates to what my employer does so I've sort of cornered myself in a bad place. In hindsight, I also made some mistakes in how I went about evangelizing it.
Ideally, I want to keep the ownership with myself but I doubt that is going to work out.
I think what I want is: - to be compensated in some form for all the time I've put in over the last two years - to have control over the product roadmap (this I'm fairly confident won't happen in the way I want in the long run)
What are my options here? What should I ask for here? I don't have much clue as to what can I ask for here so any suggestions would be helpful. People at my company generally wants to work things out to keep everyone happy to some degree.
Depending on your country and state, as well as your employment agreement, there are a lot of impactful variables. Intuition and personal relationships are not going to help you solve this issue, especially, absent knowing the law and your position.
The tricky part is probably finding such a good lawyer and coming up with the money to pay them.
Edit: to add to you second point: If "legal" and "fair" are so different, that's exactly why you can't rely on your intuition but need to consult an expert.
This. Anything you say. Anything at all. Can. And will be used against you in a court of law. Your job wants your code. Personally I would lawyer up and start applying for new jobs elsewhere and ensure they wont pull the same. Just never work on code from their hardware on their resources (internet, power, etc).
And when you sit down with the lawyer, make sure to bring your employment contract and IP agreement. They'll need those to give you any informed opinions.
I probably should have cleared this out in my original post (my bad) that I do not wish to pursue the legal route. I personally feel that in my case, it will just drain everyone's energy for not much gain at the end. Also, personal relationships matter to me as well.
I'm trying to find ways to get compensated for the time and effort I've put into it. If not financially, then in some other forms. But I don't have any ideas.
The way you use that leverage is then explain why you feel something is not fair. In a professional context, you can explain your position in legal terms when you take a compassionate, kind stance, smile and analytically explain the situation from both sides.
It's no more different than handling a code review.
Now, two things can happen: Either your employer is amazed that you both created a new product AND can navigate business negotiations. This is good for your career (unless your employer is an idiot).
Note that creating a new product that people love increases your market worth tremendously (unless you are already at a fairly well compensated level).
Traditionally the simplest way to compensate employees has been to give them a raise. Hint - you could ask this :)
The funny thing a higher pay grade does is that suddenly management will respect you more (we pay him x dollars so he must be awesome).
Or, the second case: you find out your employers 'mr. Niceguy' culture is actually a charade to fool people working at below market rates. At which point the fate of your sideproject totally depends on the legal feedback you received. And it would be better for you to find a better employer.
There are really good books on negotiation and influence. I suggest you read them when you have the time. Examples: Cialdini, 'Influence'. Voss, 'Never split the difference'.
If you don't want to spend money on lawyers, at least read all relevant laws (which is important even if you have lawyer around you).
It's also better if your company doesn't know about your preparation, as it can be used as defence weapon in the negotiations only if you would get a worse position than what you have rights for anyways. Preparing in secret also helps you get more evidence for your case.
A 30 minute session with a lawyer will give you much more insight in to how to deal with this situation more than what you can learn from an internet forum.
If you don't want to do even that then my advice to you would be to hand over the code, fork it, leave this employer and call it a day.
You may have to reset your expectations about walking away with both compensation AND control.
You should do so as well, to be on the same footing. This lets you negotiate with confidence, you'll understand your BATNA and the terms of your contract with the business.
We can't even begin to think about the answers to this question with knowing what state the employer and/or poster are in. Nor can we begin to think about it without the specifics of the application and the field that the employer develops in. The ultimate conclusion of this will ultimately boil down to minutiae. Minutiae that we are neither privy to nor have the knowledge or experience to reasonably discuss.
He needs someone who understands the law and the specifics, and who has his interests in mind.
I think what OP needs are good resources so that he can educate himself as much as possible. Yeah he also needs a lawyer, if this is that important to him, but being informed will be a force multiplier here.
in my experience people are generally shity when you ask for legal advice online but you could try that. For example stack exchange has one but you'll probably get condemned on there instead of getting helpful advice.
An out-of-the-box idea might be to find a paralegal on FIVERR and ask them to dig up resources to read up on.
Again I apologize for being such a jerk about your suggestion. I'm a terrible person.
If he can't talk to a lawyer, he's going to lose. Period. Maybe very badly. After having already screwed up, now is not the time to half-ass it.
You're not a terrible person but you've given absolutely terrible advice.
He, and you, may not know that you do not always need money up front to engage the services of a lawyer. Many lawyers extend credit to their clients or allow clients to condition their fee on a successful outcome (a contingent fee). Depending on the desired outcome in this case, such an arrangement may be easy. For example, if OP wants to arrange a sale of the IP to his employer, then the lawyer’s fee could be paid from the proceeds. Some lawyers also take credit cards.
Also, an initial consultation to decide if OP wants to hire a lawyer shouldn’t cost anything. OP won’t get any free advice, but he should get an idea of how a lawyer could help in his situation.
Your answer is dangerous and your attitude is flippant. You need to seriously rethink both, or you're going to get yourself or someone else in hot water someday.
Ideas are a picodollar a dozen. Why don't you try this one and tell us how it works out? Or, at a minimum, find out if you could even theoretically hire a paralegal on Fiverr?
One thing to consider- spin off your side project and try to get your employer as your first customer or as the exclusive distributor.
But your employment contract should have an IP provision, and that is going to be 99% of any outcome.
But IMO it's still worth talking to (2 or 3) lawyers which specialize on the subject[1]. It gets expensive only if you decide to fight - and you don't need to make that decision just yet.
Just asking a legal expert to review your case isn't going to be outrageously expensive, but gives you a better understanding for deciding if this is worth any risks. And it would give you also a clear picture about how to protect yourself for any future ideas.
[1] I have a rule which served me well. Interview (review) any legal adviser, accountant or consultant that you might want a professional relationship with. After talking to several people you know exactly the questions to ask them to decide if they are a good match for you. Also ask them for client references and a sample invoice they have issued for similar cases. Do these discussions always in person (over a coffee) never online. The first consultation has always been free for me (idk how it is in the US though).
I've heard this many times before but what are the limits to this? Say you work at software company x and on the weekends at home you are coding a project completely unrelated to work, a dating app, a mobile game, whatever. How can any contract be all encompassing as to legally allow that?
Of course at least one and possibly more of those three things are not true for the OP, so that may be a different situation.
Why do Americans consider themselves free?
You are now in a negotiation, and so "what can I ask for" is largely determined by "what is the BATNA,"[1] i.e. what happens if you and your company fail to reach a mutually acceptable compromise and start acting purely in your own respective self-interests.
This will partly come down to legal issues (can the company take over the IP from you), but for an open source company, I would speculate that reputational issues from a "hostile takeover" of another OSS project could change the calculus substantially. If the company takes over the project by force, and you publicize the fact that they did this via the IP clause of your employment contract (which most developers regard as somewhat evil), that doesn't seem fun for their PR team. Even worse if you'd be able to fork the project.
Of course, this depends a lot on the details of your situation, so you should definitely find someone to talk through the details with who is good at negotiating. Just not sure if a lawyer is the best/only person to talk to.
[1]: https://en.wikipedia.org/wiki/Best_alternative_to_a_negotiat...
But no matter what's in your contact, that route is probably not your best option. From what I understand, you created, in your own time, a project that is valuable to your employer, and that they want to use and develop. You're the expert on this project. Not just that, you designed every aspect of it, popularised it, and your employer apparently likes it enough to want it. These are valuable skills. At the very least, this should imply a nice raise. Perhaps a promotion. You're the natural PO and the natural lead developer for this project.
I would discuss this with your employer. See if they're willing to give you a nice promotion with this project as your primary responsibility and an accompanying raise. Maybe a bonus too.
Entirely this.
I got burned by this years ago, developing side project that was completely unrelated to the sort of work my employer did, and was not developed using any company resources. But my employment contract specified that my employer had first rights to anything I developed at all during the term of my employment.
From that time on, whenever I'm negotiating a new employment contract, I make sure that any such clause is omitted from it. I've never had an employer completely balk at that, although some have negotiated a middle ground where they get first rights to a time-limited exclusive license to any side project I do that does overlap with their activities.
This sort of thing is why I advise people to actually read and understand employment (and all other) contracts before signing, and to not be shy about requesting changes to them if the terms aren't acceptable.
Also, don't listen to verbal assurances like "that's just boilerplate, we never actually enforce that". That may or may not be true at the moment, but there's no guarantee it will remain true over time. When the rubber meets the road, what the contract says is what will happen.
https://lists.sfconservancy.org/pipermail/contractpatch/2018...
Software Freedom Conservancy reminded me that everything is negotiable:
I was thinking along the lines of "Hey, I periodically do volunteer work for various charities, and I think this clause could hurt them. Could we add in that work not directly assigned to me and is related to a non-profit / charity is excluded from this clause?"
That way, if anything comes up, you could turn over copyright to the FSF or similar organization and you would be covered.
Thank you for your answer. Could you please elaborate on this one? What does the exclusive license entails? Do you get ownership back when the time expires?
Seriously? Did you not read the contract?
Most contracts specifically say that the work has to be RELATED to whatever you're doing at your day job. Blanket "we own everything" statements should never be accepted, ever.
California, for example, does not allow contracts for ownerships of things done on your own time, your own equipment and not related to your employer.
This would have been natural but the timing of this could not be worse. I just got a raise (last week) and I doubt they will consider anything more. They gave me a raise because I was doing good work for other things. I've serious doubts that there would be any financial barter possible.
I'll probably the lead for the project and my managers are fine with that. Promotion is something that I've considered either so thank you for that suggestion.
Think "perks" rather than "salary".
Seek legal advice from professionals.
As much as I hate to say it, that doesn't sound like a side project. That just sounds like overtime.
In hindsight, I also made some mistakes in how I went about evangelizing it.
It sounds like the author implied the company actually had something to do with whatever it is. That definitely makes it an unsanctioned overtime project rather than something separate like a side project.
Is it overtime if you were never paid for it? How does unpaid work have to be 'sanctioned'?
If the company really want to act in good faith, as reading between the line I assume you believe they do, they would have opened with an offer or some sort of compensation.
Instead they flat out asking you to transfer your work over means they knew and has already calculated the consequences.
Sorry to be cynical, as others have point out go and talk to a lawyer.
As an employee, if you put a lot of your business and technical knowledge (that was acquired while on the job) on a large side project effort without your employer's consent, you're playing with fire, because you may be transferring business advantage from your employer to the outside world, including the competition. You put yourself in a position where you could even get sued if things go badly (specially if your project is a potential money maker)... See the case of the Nginx author, who just got himself into similar trouble...
In conclusion, I think your safest bet is to, as everyone is saying, talk to a lawyer... not to threaten the company, but to protect yourself and hopefully come to a friendly agreement at the end!
How have they responded when you told them:
* I'd like to keep roadmap control
* I'd like to be compensated for the work I put in on my own time out side of work. (which is well documented from the commit logs, and the fact I wasn't using an employer owned computer)
* I'd like to keep working on this on my own time outside of work.
If you are worried about long-long term, i.e. the time that exists after you leave the company, with the right software licensing strategy it's likely you could fork the project down the road and retain roadmap control of at least a fork of the main project.
You may want to consider working with your company's lawyers to choose a license (you can re-license open source software -- https://opensource.stackexchange.com/questions/33/how-can-a-...) or figure out if the Apache license meets your needs.
Short term it sounds like the outcome is pretty clear, long term seems like you have a lot of options.
The company overall is quite stingy and I doubt that they will do this part. I'm trying to figure out what other things that I can ask for other than financial compensation. Someone mentioned Promotion and a positive review is something to ask for, which makes some sense. The only problem is according to my review, I'm already exceeding expectations. So, this project doesn't buy me much.
Overall, they are fine, and kind of, want me to drive the project, essentially because there is no one else who can do that job.
* The company agrees to pay you for adding some extra features to the project
* You keep control and exclusive rights, but give them a license to use it (but not transfer it to others)
Edit: even if they legally can claim full ownership of the project, you have the full right to resign and go work on something else after they do so. And if this is not what they want, you will have pretty good chances negotiating a non-exclusive deal instead.
One last piece of advice:
=== DO NOT AGREE TO ANYTHING WITHOUT A LAWYER ===
Many companies would consider it business as usual to agree on your terms verbally and then slip in a clause in the contract that would completely change the balance in their favor.
I'd concentrate on the positive rather than the negative, that if you get to work on this project via your employer from this point on you'll be getting paid to do the thing you were doing for free.
Getting paid for past work seems unlikely. You already admitted you didn't care about compensation by open sourcing the project. You were willing to give it to anyone, including your own company as open source. Not that you can't ask, maybe they'll be nice about it, but just saying it's strange that before they asked you were giving it away for free to any company and now that they asked you want compensation.
To be harsh you arguably did something wrong by making something that directly competes with your employer. It doesn't matter that it was on your own time. It's called a "Duty of Loyalty" and basically means you can't get paid as an employee and at the same time stab them in the back by competing with them.
https://www.google.com/search?q=duty%20of%20loyalty%20employ...
Maybe you don't think it competes but you said yourself it directly relates to what they do so yes, as you admitted, you've cornered yourself in a bad place.
Some companies, like Google, have an easy way to get a signed contract saying they will not claim interest in your project before you start (or they'll point out it's a conflict of interest like if you said you wanted to make a cloud based mail service ... in which case my guess is they would try to get you to join the gmail team, contribute to it, or you could quit and start your cloud based emails start up). The point is they are upfront about the legal issues and provide a way to work out a solution. Most companies don't have a procedure for this until it's too late.
"As part of your employment agreement, Google most likely owns intellectual property (IP) you create while at the company. Because Google’s business interests are so wide and varied, this likely applies to any personal project you have. That includes new development on personal projects you created prior to employment at Google. However, we understand and sympathize with the desire to explore and ship technology projects outside of Google."
If you have to abandon what you've done, leave, and recreate a new version, would not take you two years. Two months? Less? Not saying this is what you should do, just that you consider what it would entail, if you handed the company your side project and then left to go re-create it from scratch, with all the lessons learned from the first time.
[Manager Names]
My time at [Company Name] has been a great experience. It has been a pleasure working with you. As you may know I created [ Open source project ] on [Date] and have enjoyed growing the product and user base. Building and supporting successful products is something I enjoy and will be looking for opportunities to do that outside of my current role. [Day 2 weeks from now] will be my last day at [Company]
Best of Luck
Then you can negotiate from a place of power. Don't say anything about your plans other than that you are going to pursue other opportunities. At a minimum they will make you a counter offer, something like 10% pay increase and a new title of "Product Director". It is up to you if you want to negotiate something different like back pay or if you want to try to create a new product from scratch on your own or if you want to find another job.
OP: My employer wants IP I've created. I want to negotiate compensation for it.
Your advice: Start by sending them a resignation letter.
Negotiations are all about relationships and starting by triggering others fears of abandonment is not the way to collaborate to a mutually beneficial option.
I would suggest that the OP asks the if the employer would be open to discussing what he wants "given the additional value I'd be providing the company, I'm wondering if we could discuss my compensation and control over the project and any interests you may have?", and seek legal advice if he's not confident asking.
It's important that the as initial ask is not phrased as anything extortionary ("give me x or I will/won't do x") as that kind of talk is more likely to trigger legal concerns.
Negotiations are about leverage. Having a good relationship with someone is great. But they are not going to give you a big chunk of money because the like you. They are going to give you a big chunk of money because they need to you stay on when you are on your way out the door.
On the other hand, it is usually not legal for the employer to have any right over what employees do on their free time, provided no resources from the company (phone, laptop,...) have been used.
You have two other options: 1. You can stop immediately. Just say you are no longer maintaining and supporting it for free. You can work on it on company time. If anyone wants to pay you for your personal time to work on fixes and bug-fixes they wan, they can, at which point you can do that work, and release it as either part of the open-source project you have, or as a private fork for that customer.
2. You can quit your job. Go work somewhere else who is willing to work on your own open-source projects on your own time and maintain IP. Then, abandon the project since it no longer belongs to you. Your current company is the copyright owner. Start a fork, which will now be yours, and you're the copyright owner of any new code, including changes you made to the old code. If the original license is permissive, you are under no obligate to contribute back.
Having said all of that, this is not what I would personally do. I would be happy that the company I work on wants my work so bad that they're asking for the transfer of ownership back to them. I would tell them that shouldn't be a problem but you'd like something for it, such as being able to work on it on company time, etc. Otherwise it sounds like they just want to own this thing you created and have you continue to work on it for free on your own time indefinitely, which I don't believe is what they're asking for -- you weren't clear about that.
I personally believe that going to a lawyer at this stage is 1) expensive and 2) unnecessarily confrontational. I understand the argument about understanding your legal options, but at the point where you start to rely on the law, you're entering a contentious negotiation which can be unpleasant and expensive for everyone.
So I'd just say "Hey, Employer, I've put in a lot of my personal time into this project. So I think it's fair that if you want it that I should be recognized in a concrete tangible way since clearly you want it because it adds more value to the business."
And I think depending on the kind of company you work for, I'd ask for additional equity in the company (since you'd be making the company more valuable) plus additional cash (because you were working on this project night-and-day) and some sort of recognition would all be reasonable asks.
Best case, you both win.
Let me restate this: You had an idea you were so interested in you created it in your off time. You made it open source. Your company likes it so much they want to contribute to the codebase. You, being the leading expert in this software, are the one most likely to be tasked with working on this codebase.
Beyond the obvious "OMG You're going to get paid to work on your pet project!"
the concern being that they seem to want to control it.
Compensation is probably not going to happen. IF it does then you are pretty much guaranteed they will own and control it.
I would advise NOT seeking compensation, and instead saying "omg! I'm so glad you appreciate the work I've put into this open source project. When can I speak to folks about how the current development process of this project and how to submit pull requests?"
Keep redirecting the conversation towards them contributing. If they ultimately say they need to control the codebase just tell them that if they're not ok with contributing to the project they can always fork it. They get the control they want and it's probably not worth suing you and against their best interest to fire you, because you're the leading expert in how it works.
Side note: I'd switch the license to GPL ASAP. Not because I'm a huge GPL fan but because the GPL can be used as a weapon to prevent them from using it without contributing. Or, it is better at that than any other license. It sounds like you're the sole contributor, so that's probably legally sound. I'd also make some quick improvements that they would not want to forgo since it sounds like they already have the current version under the Apache license.
The way things work at this place, I'll probably end up maintaining the product until I leave my job.
The reason for not transferring over is that once I do that, they will essentially not let me create features that I think can be done better using my product, because they exist in some other product.
It sounds like there's a lot of "politics" that you're unaware of or not mentioned. Is the project actually in competition with one of your company's products? If they're an open source company, how do they handle community governance and contributions? Do they normally make contributors sign over copyright, like the FSF?
Why do you think there would be conflict over features?
I agree with others that talking with one or more lawyers should be a high priority.
sounds like you created a competing product and made it open source. that spells trouble. Get a lawyer. IANAL
Currently, if they technically own the code, your open-sourcing it isn’t valid. You can put an Apache license in the repo, but you can’t legally give a license to others to use something you don’t actually own.
So the code is not really open source until someone puts that license on it with company authority. It is just public.
It sounds like this product competes with their other products. Even if they didn’t ask you to turn over control you would have problems working for them during the day, competing with them in the evening. Possibly liability even.
If you want control, and want to use it to do things they don’t want, you probably have to leave the company.
If you are going to leave, it seems you might turn over the repo to them to avoid legal trouble, and then be sure that someone else at the coming makes the open-source status official. Then you or others can fork it. But it seems you should only do further work on the fork if and after leaving.
Again this should not be construed as real legal advice as I am not a lawyer.
And only if the company open sources it.... Cant just be forking over proprietary code.
Mitarbeiterer_findungs_gesetz : "employee invention law". Where Mitarbeiterer can be further broken into "mit arbeit -erer". Mit=with, arbeit=work, and -erer is a suffix also used in English for "person who does a thing".
Maybe a restrictive license may help: if your company takes the code and modify it, make them under the obligation of releasing the source code too.
What is the current license of your project?
Ultimately, nothing prevents you from deleting your public Git repo. You can decide that your project is not available anymore, it is your right.
> Ultimately, nothing prevents you from deleting your public Git repo. You can decide that your project is not available anymore, it is your right.
I don't think this is an option. They can still claim that they want the code because I created something that directly relates to what the company does.
That's a quick way to have a miserable life (getting fired, sued, blacklisted among peers, etc).
At least you are using the know how you gained during your work
I’ll also second all of the suggestions to talk with a lawyer, not to go on the attack but to verify that whatever agreement you come to actually gives you the rights that you think it does— as you’ve discovered, small clauses in contracts can have big, unexpected effects.
My non-lawyer understanding is that if you live in California and your company is based or the contract states that it is intended to be interpreted by California law then I’ve always operated under the following understanding:
(Not a lawyer but...) I’ve been led to believe you are safe if you work on your own time, with your own resources and it does not directly relate to the employer.
I think someone referred to this once as The California Clause. If that is the right name then I’d say the California clause is not going to protect your ownership on this case. However, maybe you aren’t in California? It is hard to imagine a state in the US that is more employee friendly so I would be surprised if you found your situation better elsewhere. Besides possibly another country? Even then I’d be surprised. Things tend to trend the other direction outside of California.
That being said, many have told you to discuss with a lawyer. And some have even warned that it can cause unnecessary conflict if you do. They aren’t wrong but you can always talk to a lawyer just to see what they think your options are. If this is as much of a slam dunk case in favor of your employer as I assume it is, I like to think a good lawyer would be able to let you know.
On the bright side, if your employer does take it over and they still allow it to be open source, that’s super great! Getting paid to do open source is a blessing. There are also so many benefits to being the creator of a valuable tool in your company. These things can often lead to promotions, bonuses and all kinds of personal fulfillment at work.
If you do learn that you’re going to have to hand it over, find a way to spin it into a good thing. Don’t let it make you bitter. And next time you build something on the side, consider your employment contract and decide if you want to build something that doesn’t relate with your employer so you might have a better shot to align your desire to keep it.
Try not to let this make you bitter. This could be a great thing whichever way it turns out.
Ultimately, as the creator, it's in the best interest of the open source project and society that it remain under your control.
If companies could claim ownership over all their employees' personal open source work done during their private time, there would be no open source projects today.
Most of the responses here concentrate on trying to get some kind of financial return for your work.
That's important, but for you it might not be the most important thing (you were giving it away and working on it in your spare time, right?)
Consider asking to make it your full time job, or something like that. You clearly know the field well, and you've managed to build community. Having the company resources behind you and the responsibility to run the project like you want might be an outcome that interests you.
I wish I knew myself better.
Maintenance and taking the product forward will naturally become part of my job, so that's a given (and I'm happy about it).
What can I ask more for is what I'm trying to figure out and having a hard time.
I'm generally creative with software and products but I'm really bad when it comes to negotiations and figuring out a good barter.
I absolutely don't want to take the legal route and want to work something out mutually.
It doesn't cost them anything, and in the future if you leave it's surprisingly useful if that is a direction you want to go.
I know you are getting a lot of advice saying "get a lawyer". That's up to you.
> I absolutely don't want to take the legal route and want to work something out mutually.
You know, a good lawyer is both good at listening to his client’s goals and good at negotiating. Such a lawyer would avoid a “scorched earth” outcome, if that’s what you want, and also negotiate a better deal than you could on your own. Lawyers who specialize in business transactions are sometimes called transactional lawyers (as opposed to litigators, who specialize in asserting claims in court).
If you are in Canada I can recommend someone who is good, former software engineer and does IP law.
> "Directly relates to what my employer does"
You will face multiple charges. You have no IDEA - how brutal it can be in court. In 99% case - You will fail mostly because - you built your company competitor while working in a company that is more likely to become your future competitor if court grants you your right. This will break 99.999% company of the world. In many of the employee contracts - Some/Most of the Company has a clause that - you won't be working for the next 18 months or any X months in a company or product that is directly their competitor.
My Suggestion as a company, "Be Polite to your BOSS and tell them every truth on why you built", "what provoked you building something like this outside of the company", "How would you like to see yourself in next 10 year".
If your company is really "p* off", Max, they will do is, they will stop some future promotion and would most likely keep you away from most of their work, they will remain alert on your every step and would call a lawyer to inform you a certain thing, for which they don't have to bear the cost of fighting court case at the end, company saving money.
============= THINGS WOULD HAVE BEEN LITTLE DIFFERENT ########
If you would not have built anything related to what your employer does or what your company does.
###########
Imagine you have company and you hired some employee. Now all or some or one of them has build something related to exactly what your company does, how would you handle?
Dont be afraid to be transparent. I would still review your contract and potentially call a lawyer just to see if theres any action whatsoever but it might not be necessary.
Just be open about your wants and needs. Tell them you just want to be able to keep your project since you worked on it in your own time. Hell tell them you are okay exposing your codebase under their org. But get it in writing that you intend to keep rights to all code you write even if done at work. Allowing you to be paid to work on it for customers they nab.
At the end of it its all your choice. Just negotiate terms that make you happy. Do not hold back concerns. Period. But be smart and ensure they have a legal footprint. Make sure to get copies of anything you sign. Dont agree to anything that isnt on paper.
Only a proper lawyer can help you, though you should do initial searches online to see wether you get an inkling of where you stand, and possibly reduce amount of time needed to spend on expensive lawyer. See if there are free legal councel near where you live, online or if anything can be covered by insurance.
"I've developed it on my own time but the product directly relates to what my employer does"
This is a bright huge red flag. Depending on the contract you signed, creating something in direct competition while employed can be grounds for assuming ownership. Using company resources, time, knowledge, clout, internal discussions and/or reputation, can be strong case for this company, against your position. Evidence and witnesses as well as your own words can be used against your position. If this IP was unrelated to company offerings, they would be less interested, and probably objectively strengthen your own case somewhat, depending on what they can prove and not.
If you want to go very cheap, or avoid possible bill-hungry lawyers: Ask your boss wether they've cleared this with their internal lawyers and if you can get this confimed via a signed statement of company claims of ownership and exactly about what they claim ownership of and not. Always go internally through nearest boss or neutral intermediate in writing: Export the communications as well. Avoid contradicting your own claims unwittingly.
If you get this letter and don't want to lawyer-up, I'm afraid your options are limited and you should do whatever necessary to avoid getting fired or sued. If they bluffed, you just called them on it, and can negotiate from there.
Unfortunately, depending on the legal councel at this company and possible value of your work, your standing looks very weak, possibly damaging against you. This is why it's so vital to keep work and personal life divided. What may help in such situations is to do book-keeping of resources and hours spent separately for such side-project and document the process, while making sure Nothing from work is used.
Depending on your employment contract, this could be tricky for you. If your employer is nice about this and they want to encourage you, I would use this opportunity to negotiate something here which creates win-win for both. Clearly, they see a lot of value in this codebase so instead of turning this into a conflict, sell yourself to your employer. You can definitely ask for leadership control over it. Not sure if monetarily, you can get anything but worth a try.
Your employer probably owns the code, but as its primary creator, you still have leverage.
If your employer used standard employment agreements when you signed up with them, the product almost certainly belongs to your employer. This is especially the case if you used any employer-owned equipment to create it (laptops, networks, etc.).
However, your employer probably knows that if they are aggressive, you will become unmotivated and drop any work on it, making it valueless and probably causing you to hate your job and quit. If they really value the product and you, they'll find a way to make the product and your career successful.
You can ask them to give you a stake in its success, and officially bring it into the company. You can also ask them to give it back to you if they stop supporting it. If you consult with a lawyer, they can probably advise you on various frameworks on how to organize such a deal.
Yeah, that makes it complicated. Even the advice to get a lawyer is tricky, as it could telegraph intent and put you even further in a corner.
I suppose a consultation is fine, but I would be very careful about letting them know you retained one.
Pretty aggressive opener. Is that really necessary?
"There's no harm in letting them know they've retained one"
It will, for sure, trigger an internal discussion, and maybe some defensive moves like trolling logs or making a copy of his work PC drive. For example, what do you suppose the chances are that the OP navigated to his GitHub repo from a work PC?
How is advising caution in this situation "nonsense"? I would weigh the consequences of telling them I had a lawyer, and evaluate anything else I should probably do before telling them.
I just do corporate politics by first being an employee who does everything within reason to help the work progress. Eventually this builds towards managers acting in my interest. If they fail to do that I start removing myself from such extra activities. If you wrote some great software they can use you should transfer it since they will find ways to reward you for doing such things... unless you know they wont, then you have to be a pain in the ass while reminding them what you've already selflessly done for them.
Just be sure you are a nice guy and ask yourself if they are nice to you. If not, can you condition them to be nice? If not, take the legal route for everything.
I know it's not going to resolve any issues but at least you are forcing them to say why that's not possible now and what long term plans they might have in store.
Ownership might also be the wrong terminology, but I wanted to avoid the word "authorship" because you can never relinquish that right. At least to our national laws... Again not sure how it works in the US
They are obligated to take ownership.
Corporations are as moral or amoral as their leadership wants. Your average small bakery better has some good standing in a community, so it better behaves reasonably.
Their job is to keep existing, hence making some profit. That can be just enough or maximal, again depending on the wishes of the owners.
The long term value of the OSS community relationship might be more valuable than just grabbing the project. The law might explicitly not entitle them to grab it.
They can try to take ownership but are not at all obliged.
In fact the psychopatic behaviour of todays megacorps is unravelling the fabric of the societies that enable their existence.
My 2 cents - don’t.
You want compensation, you want to direct the roadmap. Your employer wants ownership. Where is the conflict?
Why make one?
(P.S. - my legal experience “peaked” about a decade ago when I hired Andrew Valentine, managing partner of DLA Piper Palo Alto to help bridge what should have been an easy win-win. We ended with a whole lot of losers. I got a full refund, though, so yah.)
(Also - Andrew, in case you read this, you never sent me the invoice for the out-of-pocket expenses you paid to UPS documents to San Bruno. I’d be happy to pay those. Contact in profile.)
On some of the key terms in a contract: explain me the situation, give me the options and the associated risks, and then let me make the call on what I (as the client) find acceptable. I've never seen something blow up when operating in this way.
FTFY
If they pressure you to sign documents then consider that they don't have your best interests at heart. Depending on the company their position could either end up being very friendly, or very unfriendly towards you.
Also remember that, if you feel this is a project with great potential, it might be worth quitting your job over.
The legal position will be different depending on the jurisdiction you are based in. The laws of Belgium are different to those in say, Delaware.
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But I don't feel like this is primarily a legal issue. It is a negotiation about property. The contracts come into play but the company and you both benefit more from a negotiated agreement than from a fight. It hurts them if you get mad and just quit, fork, give them a PR black-eye, and take the community with you.
So you should: 1. Take your employment contract and ask an attorney to look at it. 2. Ask if this document gives them the right to transfer control of an open-source project to them. 3. Decide if you are willing to quit over this or not.
Once your head is clear on what you are willing to do, it is time to start negotiating...
Hire the attorney to negotiate for you. Don't do it yourself -- you need a 3rd party and lawyers are professional negotiators. Expect to spend some money -- feels roughly like 5-10 hours if it goes quickly. You should be very clear to your company that you are asking a lawyer to negotiate for you because you want to work something out and you feel like it will destroy your relationship with them if you try to do it yourself.
Then get the attorney to discover why they want legal control of a project that is open-source when they already have you as an employee. If they care about the project and just want to influence the roadmap, they could just pay you to work on it full-time and get most of the benefit. If they feel like they need it for other reasons, see if there is an overlap between what you want and what they want. If they just feel like they own everything you do, you need to decide if that's what you signed up for.
Overall, I find it hard to give any better advice because you only presented what you want and not what the company wants. It could be anything from appearances (their investors want them have control) to money (they see a way to make a lot of money from your work). Until you know what the other party wants, you can't really come up with an agreement.
Schools can also demand ownership of your independent work by withholding your diploma, a rather nasty practice.
The best option is probably to look for another job (or self-employment) ASAP and make sure that your new contract clearly specifies your own independent project(s) as not being owned by the company.
I'm very curious about what these mistakes were. It would be great to learn from this.
If a couple hundred is too much, you just did the cost/benefit and decided it's not worth it.
If they just want the codebase it's a simple OSS fork, why would they need your permission?
My product, unintentionally, solves a lot of problems for the enterprise product that my company sells.
So what exactly do they want when they control the codebase? Do they want to make it closed source, or just more input on the development.
Unless they want to close the source, it sounds to me just like a question of negotiation of aligning your and their interestes and it sounds like you could at least partially support your own product on work time.
And of course, you need to balance any theoretical gains by winning a legal argument with your company with your long-term employment interests.
Get your employment contract in front of a lawyer.
He can only bother you if you code for money outside your work. It can be seen as a second job. Again check your contract.
What does this mean, did you use company time and resources in doing so?
A huge part of that is how to structure an open source project so that it can't be taken from the community. Basically a combo of GPL and taking community contributions without having them assign copyright to you is the most full proof way to keep something open source.
To answer your question, if they own everything they can relicense it any way they see fit. Only by having your code mixed with others' that you don't own can you practically protect it from forced relicensing.
Your employer isn’t seeking a copy of your Apache 2.0 code, which they already have, they’re seeking transfer of copyright ownership.
It really does sound like you’d learn a lot from talking with a lawyer, maybe one recommended by an open source foundation. Lots of lawyers have a first meeting is free policy, so schedule meetings with a few lawyers. Pick the one you like best, or pick none.
Even if you talk to them later without one, you need to know where you stand from a legal standpoint.
Are you paid by the hour? If not, what does your "own time" mean?
It’s pretty clear you have no legal position.
But you are the key player in the project.
So negotiate. Decide what you could get out of it and ask for it.
There should be no lawyer involved with this cause it’s not a legal negotiation.
Nothing about that is clear without knowing the relevant laws of wherever this is, the contract, the circumstances of development, and who knows what else. This is why legal advice from random internet strangers is a bad idea.
> There should be no lawyer involved with this cause it’s not a legal negotiation.
The very first thing you should learn about negotiation is that you never walk into any negotiation until you know your BATNA. How do you know your BATNA in a situation like this? You talk to a lawyer!
There are special, state-wide rights that you have in CA that you cannot sign away, some of which apply to work like this.
and the invention-assignment stuff is even more direct, here: https://thebusinessprofessor.com/knowledge-base/california-l...
What does it even mean to "keep the ownership" in this case. You have never had an ownership when it's open-source. Probably they can take you're code, fork it and use without your approval, depends on the license used.
Step 2. Figure out what you want, and why, and get it in writing. Figure out what your company wants, and why, and get it in writing. Then open a dialogue and its time to start talking and negotiating!
Is this true in the US? Its not in Australia, its actually the reverse here as I understand it. Though making a competing or related product to your employers is sticky ground.
