employment intellectual-property
Assignment of all Intellectual Property on an Employment Contract
<p>I recently got an offer from a company and my contract includes the following. (I have not signed it yet)</p>

<p>It's a soft. dev job and I do a lot of hobby coding. And company is aware of that.</p>

<blockquote>
  <p>You shall give the Company full written details of all inventions and
  of all works embodying IP Rights made wholly or partially by you at
  any time during the course of your employment which relate to, or are
  reasonably capable of being used in, the business of the company or
  any associated company. You acknowledge that all IP rights on
  creation, best in the company absolutely. to the extend that they do 
  not vest automatically, hold them on trust for the company. you agree
  promptly to execute all documents and do all acts as may, in the
  opinion of the company be necessary to give effect to this clause.</p>
</blockquote>

<p>My fear is that I might end up writing something that then company may claim. Because it clarifies as my employment period and not my working hours. So I feel like it can be used to claim any of my hobbies outside of work as well.</p>

<p>What do I do about this? Should I talk to the company and ask for more clarification in the contract?</p>

<p>This is the "work for hire" part of copyright law. The exact details depend on your jurisdiction, but in common law countries especially, copyright in works created for a job rests with the employer and not the author. For instance in the <a href="http://www.legislation.gov.uk/ukpga/1988/48/section/11" rel="nofollow noreferrer">UK</a></p>

<blockquote>
  <p>Where a literary, dramatic, musical or artistic work, or a film, is
  made by an employee in the course of his employment, his employer is
  the first owner of any copyright in the work subject to any agreement
  to the contrary</p>
</blockquote>

<p>(Under UK law, computer programs are subsumed under "literary works"). In the <a href="https://www.law.cornell.edu/uscode/text/17/101" rel="nofollow noreferrer">US</a>, a work for hire is "a work prepared by an employee within the scope of his or her employment". Even in France and Switzerland (which generally do not have the work-for-hire concept), software created by an employee vests in the employer.</p>

<p>This does not mean that if you have a job (any job whatsoever) that your employer holds copyright to anything that you create: the product must be reasonably related to the employment. As a paraphrase, if you are hired to write software, that would mean that the employer hold copyright to software rights that are created "at any time during the course of employment which relate to, or are reasonably capable of being used in, the business of the company".</p>

<p>An employer can of course waive their rights as part of an employment contract, so that would certainly be open to negotiation. That clause in the contract essentially informs you what the law is. Let's then assume that you are hired to write tax-accounting software. But you have a hobby of writing some other kind of accounting software. Even if you do the work away from the office, outside of office hours, this work is during the course of the employment and reasonably (indeed, obviously) related to what the business does. If you are hired to create game software, accounting software is still reasonably (eminently) capable of being used in the business of the company. Finally, suppose you are hired by Omni Consumer Products which creates control software, and your hobby is creating amusing fractal display software. Not reasonably related: but Omni is a subsidiary of Umbrella Corp. and an associated company sells amusing games in need of fractal display software. In these cases, the hobby software could well be subsumed under "work for hire".</p>

<p>Copyright statutes usually leave the notion "course of employment" undefined, so it's up the judge and jury (or previous judges and juries) to decide whether a particular set of facts describes a work for hire, or not. The above clause basically says "if you create something that we could claim as a 'work for hire', you have to tell us". In terms of asking for clarification, I don't see that there is anything that they could (would) clarify. One can always attempt to negotiate specific exclusions, thus a contract could narrowly delimit particular hobbies that are excluded from the scope of employment.</p>

<p>You're not misreading anything. The company wants you to sign over ownership of any and all ideas that you may have during your employment. This includes any of your hobbies if those hobbies are tangentially related to your employment (and since they're a software company this likely includes any and all software you write). This of course has major ramifications if you ever wanted to go into business on your own, but could also be a major cause for concern if you ever wanted to contribute to open source software projects. </p>

<p>This type of contract is increasingly common in the USA, particularly for software developers and other high-tech workers, and unless you happen to live in California it's likely that there are few or no legal protections for you.</p>

<p><a href="http://fortune.com/2013/12/06/does-your-employer-own-the-entire-contents-of-your-head/" rel="nofollow noreferrer">http://fortune.com/2013/12/06/does-your-employer-own-the-entire-contents-of-your-head/</a></p>

<p><a href="https://www.nytimes.com/2014/04/14/opinion/my-ideas-my-bosss-property.html" rel="nofollow noreferrer">https://www.nytimes.com/2014/04/14/opinion/my-ideas-my-bosss-property.html</a></p>

<p><strong>If you are at all concerned about your current or future intellectual property, or you ever want to go into business for yourself, then you must talk to a lawyer before you sign this employment contract.</strong> Employment law varies by state and even by city, so there's no way we can give you a complete answer on this topic. </p>

<p>You can try telling the company that you won't agree to that part of the contract and gauge their reaction, or you could ask how they deal with people who have pre-existing or other outside IP. But, the HR people are not lawyers and you shouldn't take them at their word if they tell you it's not a big deal or they've never used that part of the contract. If you come up with the next 100-million dollar idea they absolutely will sue for a piece of it, regardless of how relevant it is to their industry.</p>

<p>Also, beware of so-called "trailer clauses" that would allow this employer to have a claim to any IP you create <strong>after</strong> you leave their employ. </p>
