Who owns the code when my employer wants something similar to my existing open source project?

Question

I have a similar situation to this question.

My employer hired me knowing that I work on some open source projects, but for a long time, showed no interest in my open source projects. Now they want me to work on something similar to one of my projects.

Before I started working there, I planned to expand that particular project into a small side business. I might close the open source project as I turn it into a business. My employer does not know of my plans to start a small side business. My side project is not identical to what I would do at work, but it is similar.

My open source project has nothing to do with their products, so it would not compete against them. It would simply make some of their internal business and software development activities easier to do.

There are 4 tests for what is considered acceptable as a personal project.

1. I don't compete against company interests.
2. I don't work on it during company time, but on my own time.
3. I don't work on it with company resources, but with my own computer.
4. I don't reveal any company secrets.

My side project would certainly pass items 3 and 4. #2 is iffy because I can rewrite similar code at home as what I would at work. #1 is iffy because although the project is not even remotely related to the company's product, it does make the company a little more efficient.

Yet, I signed an agreement when I started saying I would turn over any intellectual property to the company that is developed during the course of my work.

Can I retain ownership of any open source code I write which is similar to what I would do at work?

Answer 1

How can you get in trouble?

1. If they see any code you wrote for them show up in your open source project.

They own the code you write on company time. Even if your code goes into an open source project owned by the company, you still don't own that code. The only way you can own it is if they directly tell you that you may put it into your open source project.

2. If you make your open source project private so nobody else can see the source code, but they see your side business has the same features you wrote for them.

You can try to get around problem #1 by hiding your open source project. But if they see the same features in it that they told you to write for them, they can become suspicious. They might force you to reveal the source to them in court. If you don't want them to see it, they may force you to share it with a third party who is bound by an NDA. The third party can compare your code to theirs and report if you copied any code.

3. Even if your work is not directly related to the company products, your work for them can be a company secret. You reveal that, and you are in trouble.

You say your work improves internal procedures, but is not directly related the company products. If a company can reduce its cost, it can lower its prices and still make more money than their competition. That gives them a competitive edge over other businesses. By revealing how your employer does its internal work, you give that competitive edge to their competition.

Although you say your open source project does not violate rule #4 - "does not reveal company secrets" - all three explanations mentioned above say it does.

What can you do?

1. Quit and start your own company based on your open source project.

If you quit, you should do it before you write any code related to your project for your employer.

2. Ask your company to fund your project.

Talk to your boss and anybody else there who might be a stakeholder. Tell them what you can do. Make a deal with them that you get to work on your project during work hours. Maybe they could turn it into an additional source of revenue for the company. That changes you from a potential loss into a valuable asset. Their competitors might end up buying products based on your code. Many companies would love for their competition to pay them.

3. Ask your employer to allow you to turn your work into your open source project.

Some companies require employees who work on open source projects to give their employers a royalty-free license to use and modify the work as they wish.

4. Ask your employer if they would use a product based on your project.

You can start a side business (with your employer's blessing), and turn them into your first customer. They get access to a beta product before their competitors do. Promise them they get it free or at a hefty discount for a year or two before the competition even knows what you have.

The first option is win/lose. You win and your employer loses. The other three options are win/win.

Good luck!

Answer 2

If the company wants to use your open source project as open source, then they can just ask you as part of your employment to create a fork of the project, and make the additions that they want. They can only do that if the project stays under an open source license. If they distribute this to a customer without accompanying it with the source code, then anyone in the world including me and you can demand the source code, and use it under the open source license. If they use it only internally, or any distribution is accompanied by the source code, then you have no right to get the source code.

If the company wants to use your open source project, but not under an open source license, then they have to negotiate with you under which conditions they can use your copyrighted source code. A negotiation that says "you let us have the code or you're fired" could most likely be challenged in court. At a later time. When it costs them lot of money.