Intellectual Property / Licensing

[jimmalenko]

I have a situation at work - some time ago one of our employees proposed an idea of creating a promotional DVD and software for us to market to both existing and prospective home loan customers at our bank, with the aim of using it as a marketing tool. It comprises a methodology for budgeting, and the software basically lists about 70 different categories/costs one may have, as well as taking the customer's income details, so it's basically just an advanced calculator of sorts. It totals everything up for you and the goal is to be in surplus after you've defined how much you earn, then delegate this money to each category as required.

The employee developed a spec DVD with the help of a few of his mates, and I developed the software. This was done out of hours at our private residences, and using our own resources (my VB, his video camera, etc). Both "finished" products were presented to our board of management, who approved the idea and provided funding in the budget for the development and implementation. It was decided that we as a company would trial our spec DVD and software so that the DVD could be professionally re-shot, and any fine-tuning could be done to the application.

We're at a point now where the DVD is being shot on Saturday, and I've been informed by our Marketing Department that I need to liaise with a 3rd party marketing company that we outsource some items to for advice and suggestions regarding branding, fonts used etc. So far during the trial, I have used all my own materials in producing the finished product - my PC, burners, CDs, DVDs, cases and printers/ink - all at my own cost.

While I know that legally things can change from state to state and from country to country, I believe that I have the right to claim expenses, and also to claim a "selling fee" for the software - ie. allow my company to purchase the software off me. I believe I also have claim to expenses incurred in the production of the software, such as labour and also costs related to the computer equipment and peripherals used.

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I have advised my company that if this is going to be adopted for company use (it's a lay-down mazair IMO, already been approved & funded, just needs to be signed off and implemented), they will need to do one of the following:

a) Purchase a license for VB. Purchase computer equipment suitable for the task of reproducing the product or outsource its reproduction to a production house. Take over ownership of the product, and allow me to perform any work as required during work time, including the reproduction if I am chosen for this.

OR

b) Purchase the software from me, as well as fund expenses incurred by way of a bill from me if I choose. If I do the production, naturally I would charge a fee per CD/DVD set that I produce.

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I am planning on obtaining legal advice, but I'd like to hear your thoughts on the matter. Am I somewhere near the right ballpark, here ?

[adam]

I'm no programmer, but if you are required to purchase al license to use VB commercially then they are going to have to do this regardless of whether you do the work or they do it.

As far as the rest of your question, I don't see these as legal issues. You just need to negotiate with your company as to how the production and distribution are going to be handeled. Whether you remain on board or not, and how much compensation you get for your current and possible future input is just something you need to work out with your company.

One point to consider is whether any of the information you are using or presenting in your project is confidential or otherwise specific to this company. If so, then what you are doing is considered a work for hire since you are their employee. This is especially the case if you have been doing this project on company time. If this is a work for hire then you dont own it, the company does. They own the copyright. You really don't have much room to bargain except to request reimbursement for your expenses.

[jimmalenko]

Thanks Adam. I was kinda hoping you'd see this

I'm going to have to get some legal advice, I think. I'm interested to know exactly where this stands in terms of works for hire <insert australian copyright equivalent here>, and if I have the legal backing to demand what I am demanding, should push ever come to shove. I also want to know my rights should I ever be sodomised over this.

[SquirrelDip]

Hey Jim,

I believe you're going to have to really read over your employment agreement. Most have a clause regarding things you develop/create on your own time.

If you have not got this in your agreement you may be able to get paid for your work - if you do then the most you may be able to recover is getting paid for the time (basically at your hourly rate).

You may be lucky if this work is totally nonrelated to what you were hired for - but the simple fact that it's financial and you work for a bank is going to be snookered. In all fairness, if they find what you've done of value they should reward you for it - I'm just feeling that they won't have to.

IMO they should pay you for anything you've spent out of pocket - shitty thing is that they could claim ownership of what they pay you for.

Over the past many years I have been developing design software for highway and rail engineering design. A few of the tools I've got, with a little work, would be markettable packages. I've looked into the possibility of selling some of the stuff I've got and basically it comes down to the fact that I wrote engineering software while being employed as an engineer I don't truely own the software.

My current employer is fantastic (an 8 person operation). I've sat down with my boss and talked about selling new things I write. There is an additional problem that I never thought about in the past and that is that there is an implied liability that my employer has to my work - if something screws up the guy I sell it to may be able to recover damages from my employer.

That last one could apply to you if you decide to try and sell the software on your own...

Cheers!

[northcat_8]

I believe you are just going to be out of luck Jimm. You are an employee, working on something for the "company". You are just being a company man, and I doubt they pay you anything for any part of it.

Had they requested you to do it, or if you worked somewhere else and they had you do it, that would be different. If one of us were doing it, they would pay us, but you work there already.

My school trys to get me to do stuff for free all the time. Creating videos for all kinds of shit. I did one, then when I saw it was going to be an ongoing thing, I just had to tell them that I do video as a business and if they wanted to contract me to do it, then fine, but if not, I had to place a higher priority on customer orders.

If I were you I would just ask them if they were going to cover your time and materials. You may not get paid for the time, but they might pay for your materials.

[jimmalenko]

Thanks for the input, guys. I think you're all right so far, unfortunately

[Hardcoreruss]

I re-wrote a back office banking system for a company I was working for about two years ago.

Saved loads of time, more cost effective etc.

However as I designed on it and worked on it during work time it was the property of the company and there was nothing I could do about it.

They still use it, really pisses me off it saved them 135k in the first quarter it was used. Thats one reason I went self emplyed in case I wrote anything else they would not be able to take ownership off it without paying me off.