1

As an employee of a software company they own my personal time projects, this is not in question. That said, my employer is quite reasonable about said things and at least verbally quite willing to review something and say "this isn't related to our work, you can have it."

It being a small shop, verbal acknowledgement has been all they used before; they have no form for assigning a particular projects IP back to an employee. For a project I want to make and open source I would like something in writing. My employer is receptive to that but they want me to provide the form.

I have been looking for either a template or some resource to help me write a little thing that they can sign that says something like: "The company transfers back all rights related to this project to employee, and we cannot take this back later."

I suspect I don't know the correct terms to search because all I find are templates for employers to have new hires sign that assign their IP to the employer or articles talking about how really the employer owns all IP anyways.

Is there a particular term I can search for this? Do such templates exist?

3

The Free Software Foundation faced the same issue, as many contributors needed disclaimers from their employers. Luckily, it's not difficult. Their template:

Yoyodyne, Inc., hereby disclaims all copyright interest in the program “Woodpecker” (which deconstructs trees) written by James Hacker.

signature of Moe Ghoul 1 April 1989
Moe Ghoul, President of Vice

As the year 1989 indicates, this template has been accepted for decades.

  • 1
    Has it been at the center of any court cases? I am definitely not an attorney but I would expect some "notwithstanding the agreement between the parties of XYZ and etc." in a real agreement. If it was important I'd spend a few hundred dollars on an attorney. – George White Oct 14 at 22:53
  • 1
    @GeorgeWhite: The FSF likes to point out that simple and clear terms generally do not end up in court cases. And that's a two-way street. The fact that it didn't end up in court cases goes to prove that it is not ambiguous. True, there's no harm in back-referencing the document to which this permission is an exception. But the very wording makes it clear that this is a specific exception to a general rule. – MSalters Oct 14 at 23:15
  • I feel like kind of an idiot for not just going and meandering around the FSF website (probably overlooked them because they are all GPL all the time and I am wanting to use 3-clause BSD). Thanks for pointing this out! – James Matta Oct 15 at 1:00
1

Besides any disclaimer of copyright ownership of your future work (like the FSF document), the situation might be that you have already started writing code for the project. If so, and if your employee agreement or the force of law in your state dictates that work done on your own time is work for hire under copyright law then they already hold the copyright to that work. From the copyright office web site -

Any or all of the copyright owner’s exclusive rights, or parts of those rights, can be transferred. The transfer, however, generally must be made in writing and signed by the owner of the rights conveyed or the owner’s authorized agent.

If copyright rights must be transferred in writing, I'm not sure "disclaiming" does that. You might need an affirmative assignment of whatever you may have started writing. Copyrights are not the only possible IP involved. It is possible that something you create is potentially patentable or something that someone at the company might decide later should be a trade secret.

It may also be a good idea for something that gives up the company's rights to go out of its way to say what its rights came from and state that this is an exception to that. As in "notwithstanding the provisions of the employee agreement dated XYZ and state law ABC, ..."

I'm not a lawyer and you should pay one a few hundred dollars to help you with this.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.