Is this "Works for Hire" language enforceable?

Question

I am reviewing a job offer that includes this Works for Hire clause:

Works for Hire
During the term of your employment, you may create an idea, process, trademark, invention, technology, program, original works of authorship, patent, and/or copyright, including improvements, rights, and claims thereto, alone or in connection with others (“Works”). All such Works are within the scope of employment and, by signing below, you acknowledge you hereby assign and transfer all right, title, and interest therein to CompanyName

My initial thought was that by using "term of your employment" and "all such works are within the scope of employment" that this clause would cover any pet-projects I undertake on my free time while employed by this company. Friendlier language would limit to IP crafted as a function of/related to my employment or on company time/equipment.

I found this similar question but for the UK: Is this Intellectual Property clause over-reaching?

Am I correct that as-written this clause would apply to things I create outside the scope of this job? Is a clause like this generally enforceable in the US (or Colorado more specifically)?

Answer 1

By saying "During the term of your employment" this language does indeed purport to transfer to the employer all IP created by the employee from the start date to the end date of employment, including work created outside of work hours and off the work premises. It purports to cover all forms of IP, including patents, copyrights, trademarks and trade secrets. This is an excessively broad provision.

If the term had been "within the scope of employment" or "in the course of employment" the claim would have been limited to work related IP, but that is not what the quoted provision says.

In some jurisdictions such a broad provision would not be enforceable. In particular California, Illinois, and Washington State prohibit by law an agreement to transfer inventions made on an employee's own time and not as a part of the job. See "Should You Sign an Inventions Assignment Agreement?" from Nolo press.and "Five Tips for Transfer of IP Rights From Employees to Employers" In the jurisdictions such agreements may be limited by case law. One should consult a lawyer knowledgeable in both IP and employment law in a particular jurisdiction to see what limits apply in a specific jurisdiction.

A page "Key Contract Issues for Creating or Revising Your Confidentiality, Ownership, and Employment Agreement" from a law office advises:

Developing IP is IP that is developed after the date of the agreement or after an event identified in the agreement. Developing IP may be developed ( independently, meaning, the IP is developed by one party, alone, without the help or knowhow of the other party. It is customary for independently developed, post-agreement IP to be solely owned by the conceiving party. In some circumstances, due to a business strategy or goal, the parties may agree to a different ownership scheme; however, in practice, such circumstances are not frequent.

Answer 2

It would not be valid in California. see California Labor Code § 2870(a). This will be state-specific and complicated.