Question about employment contract

Question

I was asked to agree to the following employment agreement and I have concerns:

I acknowledge that all of my work product, including materials, ideas, and other property, whether or not copyrightable, which I create with myself or with others relating to my employment with the company is "work made for hire" for the company within the meaning of the US Copyright Act of 1976 and for all others purposes, and I hereby assign in perpetuity all of my rights in any such work product which may not be work for hire, exclusively to the company.

I will likely file for several patents next year. The subject matter of these patents has nothing to do with the type of business performed by the company who extended me the offer. Furthermore, I would be a seasonal employee.

Do I have reason to be concerned about them taking control of any of my ideas?

Also, I understand broadly what work product is, but I do not understand what would constitute work product and yet not be considered as work for hire.

Answer 1

I think "I hereby assign in perpetuity all of my rights in any such work product which may not be work for hire" is an attempt to be a catch all for any intellectual property that is not subject to copyright. This tries to covers things that might be trade secret or patentable matter. "Work for hire" is specifically a copyright concept.

i agree that the wording here is circular and illogical and does not achieve this goal.

Answer 2

17 USC 101 defines a "work made for hire" as either "a work prepared by an employee within the scope of his or her employment;" or a long and restrictive definition of a work prepared by a non-employee under a contract declaring it to be one. The restrictions are important because under US copyright law the employer us the legal author of the work, and the employee does not have "moral rights" nor is the employee's life used to set the copyright term. (This is different in non-US countries.) Note that copyrightable work by an employee within the scope of US employment is automatically "work made for hire", and no employment contract is needed to make it so.

The term "work made for hire" is specific to copyright law, and thus anything not a proper subject for copyright would not be a "work made for hire", including most inventions, which are not protectable by copyright.

The term "work product" is not defined in the quoted part of th4e proposed contract, so I would take it to have its ordinary meaning "things, including documents, produced by a person's work".

Logically "such work product" which the contract purports to assign to the company is:

all of my work product, including materials, ideas, and other property, whether or not copyrightable, which I create with myself or with others relating to my employment with the company (emphasis added.)

Things not related to the employee's employment are thus excluded.

The contract provisions are as others have pointed out, poorly written. But they don not, it seems, attempt to claim rights in things not related to the employee's employment, and thus do not actually go beyond what a better-written agreement might well claim.

One way to deal with a poorly written agreement which an employee insists on having an employee sign, and which the employer will not modify the terms of, is to send a letter to the employer, promptly on signing the agreement, saying "I understand the agreement {title] which I signed today art your insistence to include [description of items included] and not to include [description of items excluded]" Sent by certified mail, or some other method which preserves a record of receipt, this would help establish, in case of any dispute, your understanding, and that if the company insists on some significantly different understanding, that the was no meeting of minds. Of course, one could decline to sign, but this will probably mean declining the job.

Answer 3

I do not understand what would constitute work product and yet not be considered as work for hire.

That is because the clause presented to you is nonsense boilerplate.

The term "such work product" refers to the contract's definition of "work made for hire". But stating that you assign all of your rights for everything else (that is, that "which may not be work for hire") renders it absurd to establish a definition of "work made for hire" in the first place.

Do I have reason to be concerned about them taking control of any of my ideas?

Although the portion if "[what] may not be work for hire" is likely to be stricken in court as unreasonable, you should require the employer to draft a clause that is more consistent.

Also, the catch-all phrase of "for all other purposes" renders it pointless to mention the US Copyright Act. This is not important, but it further reflects that some incompetent individual copy/pasted the clause from somewhere else.