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Does an employer own all my writing?
September 8, 2012 5:19 PM   Subscribe

Does my U.S. employer really own my emails, posts, Facebook updates, Flickr stream, etc?

I'm about to be employed by a large company in California, and the company's employment contract is similar to the one shown here. I draw your attention to section 3b, which states "I agree that I will... hereby assign to the Company, or its designee, all my right, title, and interest in and to any and all inventions, original works of authorship... which I may solely... conceive...", and there follows the California section 2870 exception.

The problems I see are that original works of authorship pretty much include everything one writes, which in the U.S. are immediately copyright the author. And the California exception deals only with inventions, and not original works of authorship.

So what this seems to mean is that everything I write, including this post, is now copyright the employer. Whaaaaat??? Note, I will not be working for a publishing company, media production company, or a company that would now or prospectively make profit through writing.

I understand that it's typical for a company not to allow any writing that would disparage the company or otherwise not pass the "red face" or "front page of the Times" test. But what about everything else?

My questions:

1. Should I assign a high probability that a court would find for me if the company ever goes insane and starts claiming ownership over my posts or short stories or whatever?

2. Should I put an asterisk in the contract next to "original works of authorship" and write that the contract does not cover works that do not relate to the company's current or prospective business?

3. Should I just shut up and sign?
posted by babbageboole to Law & Government (21 answers total) 4 users marked this as a favorite
 
I hate to be the LAWYER person, but as someone who lived for years in California, employment and legal issues are complicated enough that I'd encourage you to seek out a local (CA) lawyer that deals with employment law (or even contracts?) and pay for a consultation.

Depending on your vibe with the company, you might start this by saying candidly, "I'm very excited about working for you, but some of the terms of this contract are puzzling to me. Could we talk about them, or could you suggest someone I could speak to about what they would mean for me?"

Could be a useful and productive conversation.
posted by arnicae at 5:26 PM on September 8, 2012 [2 favorites]


You can negotiate an employment contract. Might be worthwhile to hire a lawyer for an hour. The chances of this coming back to haunt you are slim, but it's a matter of best practice to negotiate a contract until it's reasonable and not sign if it's unreasonable.

I did this once in a job. The contract precluded me from working in any company whose products were in any way related to theirs at any time in the future. And this was in the contract for employment as an intern! It would have seriously limited my career options and was ludicrous.

I asked for that part to be modified to something more reasonable. The entire conversation was polite and professional and took 5 minutes. Let this be your first challenge in business communications at your new job!
posted by kellybird at 5:31 PM on September 8, 2012 [4 favorites]


IAAL but admittedly have IP as only a small part of my practice.

That sort of clause is rather standard, which you can see from the fact that it is to be found in a form book. I even had one in my contract with a fast food restaurant where I once worked as a teenager. Under this contract, the company would not be "insane" to claim ownership in your original works because you have explicitly assigned it such ownership.

You can try to modify the contract, but I think the odds are against you. This is a large corporation with a form contract that has presumably served it well over the years.

Your concerns seem largely academic to me. Are you planning on creating some original work of literature, music, or dance? Think about how often you have exercised your copyright rights and then you may have an idea about how often this company may do so.

The contract precluded me from working in any company whose products were in any way related to theirs at any time in the future.

I have done my fair share of non-compete cases, and this clause would have been unenforceable as a matter of law in my state and any other state I have heard of. A non-compete must be limited in time and scope. For example, limited to a period of a few years instead of indefinite, as in the case of this poster's contract.
posted by Tanizaki at 5:43 PM on September 8, 2012


The only time I've been asked to sign a contract like that was in 1987 by Apple Computer. I asked if I could cross out the line. They didn't answer, so I crossed out the line, signed the contract, and never heard another thing about it. The other people who were being hired at the same time (our tiny company was being acquired) did the same thing.

Companies probably run tighter ships these days, so it probably won't be that easy. But it can't hurt to ask. If you don't like the answer you get, you could talk to an attorney about the enforceability of the clause for material that is unrelated to your work.
posted by alms at 5:47 PM on September 8, 2012


I have twice negotiated minor changes to overly broad clauses in the employment contract (one small company, one very large company). The second one was of a very similar nature to yours and I was pleasantly surprised that the response was "no problem, how about this change?". They wanted to protect their legitimate IP but of course had no interest in any photography, blogging, or hobby software I was working on. In this case, a clause was added to the effect of "... in areas where [company] does business or would reasonably expect to be doing business in the future". This was good enough for me.

This was in Canada, not California (so talk to a proper lawyer of course), but at least it is a data point that this kind of thing is possible with large multi-national companies.
posted by stp123 at 5:53 PM on September 8, 2012 [1 favorite]


@Tanizaki: This is anything but academic. I take photos all the time. I write things all the time. And many of the images I take and words I write, I assign a Creative Commons license to. I couldn't legally do that if the company takes copyright. CC to me is not only a legal stance but also a moral stance. Yes, I could act as though the company doesn't care, and wouldn't assert ownership, but I'd still be subverting the principles of CC: that because I own copyright in my work, I can let everyone use it and derive from it.
posted by babbageboole at 7:18 PM on September 8, 2012 [9 favorites]


It means that anything you create for the company while in the company's employment will be owned by the company. This does NOT pertain to any personal art that you create.

For example, if you take a photo of a flower (or whatever) from your office window at work, the photo belongs to you.

If the company hired you to take photos of flowers during the work day (or after hours), then there is the understanding that you are doing the work you were hired for, and the photos would belong to them.

I had to sign a similar contract a while back and brought up the question with a manager. i was basically told the above. This would pertain mostly to engineers or designers who produce tangible or intangible goods as part of their employment.

Another example: If johnny Ive created/designed a new iPhone as part of his job at Apple, this new iphone's design, trademark, etc.... is the intellectual property of Apple. If Johnny goes home and design a better spoon on his own time, the spoon's design belongs to him.

Basically it's there to protect the company from employees selling or claiming ownership of something that they were hired to create for the company. They can't decide later on that they want to quit and sell a product to another company.
posted by eatcake at 7:32 PM on September 8, 2012 [1 favorite]


It means that anything you create for the company while in the company's employment will be owned by the company. This does NOT pertain to any personal art that you create.


If that's what it means, that's what it should say. Nthing Employment lawyer.
posted by Nonsteroidal Anti-Inflammatory Drug at 7:57 PM on September 8, 2012 [6 favorites]


The "within the scope of ... my employment with the Company" clause certainly sounds like limiting the claim to things you do as part of your job. But if you are really concerned about this you need to speak with a lawyer; be aware that even then you may not get a clear-cut answer.
posted by metric space at 8:43 PM on September 8, 2012


The "within the scope of ... my employment with the Company" clause certainly sounds like limiting the claim to things you do as part of your job

This is correct. I'm not a lawyer, but come on. They are interested in things you do within the scope of your job. The idea that they would try to claim copyright on your personal writings or photos is so absurd that I don't think it merits paying a lawyer to tell you how absurd it is.
posted by drjimmy11 at 9:17 PM on September 8, 2012 [3 favorites]


"Inventions" here is not the patent kind, it a legal term that refers more or less to "stuff you provide the company" in the "why they hired you" department. The California exception basically means that they have a claim on what you do on company equipment on company time, commonly translated to "everything in the office and on your laptop." It's fairly settled law in CA, so you don't have to worry about them coming after your watercolors or whatever. It's just their claim on work done on company stuff (time or equipment). Get your own laptop and you'll be fine.
posted by rhizome at 9:32 PM on September 8, 2012 [1 favorite]


IANAL and I know the above is not your actual contract, but the below bolded part stands out to me:


b. ASSIGNMENT OF INVENTIONS. I agree that I will promptly make
full written disclosure to the Company, will hold in trust for the sole right
and benefit of the Company, and hereby assign to the Company, or its designee,
all my right, title, and interest in and to any and all inventions, original
works of authorship, developments, concepts, improvements or trade secrets,
whether or not patentable or registrable under copyright or similar laws, which
I may solely or jointly conceive or develop or reduce to practice, or cause to
be conceived or developed or reduced to practice, during the period of time I am
in the employ of the Company (collectively referred to as "Inventions"), except
as provided in Section 3(f) below. I further acknowledge that all original works
of authorship which are made by me (solely or jointly with others) within the
scope of and during the period of my employment with the Company
and which are
protectible by copyright are "works made for hire," as that term is defined in
the United States Copyright Act.
Makes it seems as though the language is in fact limiting it to anything you do on company time or property, which is to be expected.

And the California exception deals only with inventions, and not original works of authorship.

At the beginning of the Inventions section it states this:


a. INVENTIONS RETAINED AND LICENSED. I have attached hereto, as
Exhibit A, a list describing all inventions, original works of authorship,
developments, improvements, and trade secrets which were made by me prior to my
employment with the Company (collectively referred to as "Prior Inventions"),
which belong to me.....
Which makes me think that they are using "Inventions" as a catch-all throughout the document.

Obviously IANAL but this is just my novice take on it.
posted by triggerfinger at 9:52 PM on September 8, 2012 [1 favorite]


Sorry, just realized that my first blockquote also contains the language collectively referred to as "Inventions" so I would say that authorships are included in that.
posted by triggerfinger at 9:54 PM on September 8, 2012


That "within the scope of" clause does not modify the sentence preceding it. The last time I was asked to sign a contract with this section in it, the HR rep tried to claim that the whole thing applied only to work done for the company, or in the field the company did business in regardless of whether I did it at work or at home, and like NSAID I told them that if that's what they meant, that's what they should say.

As written, the plain meaning of that clause is that 1: you will transfer ownership of any and all original works of authorship made while employed by the company -- regardless of relevance -- to the company, and 2: anything made while employed by the company that is within the company's scope is a "work for hire", which means that you don't have to transfer ownership to the company because you aren't the legal author; the company is. Two separate categories of authorship, and the company wants both of them. The second clause doesn't lessen the scope of the first; it just changes the amount of work they'd have to do to claim ownership of the subset of your creative output which is directly related to your employment.

Maybe that's not how a lawyer reads that clause, but it's how I read it, and why I wouldn't sign it as written, unless I got something in writing from their lawyer also limiting the scope of the first sentence. (In my case, it was less hassle for them to just strike the whole section, which worked fine for me.)
posted by hades at 11:54 PM on September 8, 2012


IAAL, IANYL, TINLA ... etc.

Also ... not a Cali employment lawyer ... So YMMV

But ... it is unlikely that the company would have an interest in any non-company-related creation you create, and they would be wasting their time trying to claw them back through the courts under this clause.

Here is the litmus test ... you write the next harry potter in the evening whilst employed by these people ... they try to claim it under this clause ... nope, not going to fly (unless you are employed in some sort of creative writing field or something).

You however actually wrote parts of it in your slack time during the day at work (which can be seen as you saved it to your local PC at work and/or mailed it to yourself at work, there are various versions, etc.) Hell ... here you have a problem.

Or, you are employed in a technical writing field ... and you write a tech manual in your evenings for something not too far away from your employer's field ... that will probably get caught too.

The test the courts should use would be something like a proximity test ... how proximate was the creation to your employment relationship, in subject matter and in the creation process.

(also you might want to check that there isn't a compulsory and binding arbitration clause ... it wouldn't be legal where I am from, but some US things can be a little weird)
posted by jannw at 12:48 AM on September 9, 2012


Okay, so the doc says this:
ASSIGNMENT OF INVENTIONS. I agree that I will promptly make
full written disclosure to the Company, will hold in trust for the sole right
and benefit of the Company, and hereby assign to the Company, or its designee,
all my right, title, and interest in and to any and all inventions, original
works of authorship, developments, concepts, improvements or trade secrets,
whether or not patentable or registrable under copyright or similar laws, which
I may solely or jointly conceive or develop or reduce to practice, or cause to
be conceived or developed or reduced to practice, during the period of time I am
in the employ of the Company (collectively referred to as "Inventions"), except
as provided in Section 3(f) below.
Which basically says you assign everything you ever create over to the company, without restrictions, with the exception of the below:
2870. (a) Any provision in an employment agreement which provides
that an employee shall assign, or offer to assign, any of his or her
rights in an invention to his or her employer shall not apply to an
invention that the employee developed entirely on his or her own time
without using the employer's equipment, supplies, facilities, or
trade secret information
except for those inventions that either:
(1) Relate at the time of conception or reduction to practice of
the invention to the employer's business, or actual or demonstrably
anticipated research or development of the employer; or
(2) Result from any work performed by the employee for the
employer.
(b) To the extent a provision in an employment agreement purports
to require an employee to assign an invention otherwise excluded from
being required to be assigned under subdivision (a), the provision
is against the public policy of this state and is unenforceable.
(1) and (2) seem to fall under the "works...within the scope of and during the period of my employment with the Company" quoted above (i.e. are work-related). We've determined that "inventions" is a catch-all, so based on the above, it seems pretty clear to me what other people have been saying - that the company has rights to anything that you produce on their time or equipment. Anything outside of that, they don't. This is standard company procedure.
posted by triggerfinger at 1:47 AM on September 9, 2012


The summary so far:

1. Some argue that "invention" is a phrase that includes "works of original authorship" and therefore the California exception covers those, too. Therefore, I should shut up and sign. My personal take: I disagree, because then "inventions" (in the collective sense) also includes "inventions" (in the specific sense), and now you have to ask which "inventions" does California law refer to, the collective term or the specific term?

2. Some argue that the company would never claim my piddling little works for their own. Therefore, I should shut up and sign. I agree with those who say that if that's what they mean, that's what they should say. Although nobody has yet brought it up, I feel that it undermines Creative Commons, since CC requires that the owner of a copyright be the one to license the work under CC.

3. Some say to ask that the provision be modified. I agree, and I've gone ahead and asked that. Some say to ask HR about the interpretation. I sort of agree, so long as I can get something in writing from HR that explicitly releases the works I'm concerned for. While that's not as good as modification of the original contract, it's probably good enough.
posted by babbageboole at 7:23 AM on September 9, 2012


Oh, hey, I hadn't actually read the 2870 code in full. So, yeah, the section triggerfinger bolded up there does nullify my concerns. I still would take issue with this: "I will advise the Company promptly in writing of any inventions that I believe meet the criteria in California Labor Code Section 2870 and not otherwise disclosed on Exhibit A." Because I doubt either you or the company want you to notify them in writing of every original piece of work you create, which would indeed include this post, every non-work email you write... everything.

(Also not a fan of binding arbitration clause, but that's a whole other post.)
posted by hades at 9:55 AM on September 9, 2012


I definitely don't think you should shut up and sign and I'm sorry if I came across that way. I was just putting forward of my novice reading of it, but you have good questions (esp. w/r/t the Creative Commons thing which I literally know nothing about) and you should definitely have those checked out with a lawyer.

I'm leaning toward thinking you're probably okay, based on my unprofessional reading of the above and my probably unfounded belief that a company would not put something so egregious in a contract but yeah, definitely get it double checked by an expert.
posted by triggerfinger at 12:10 PM on September 9, 2012


As someone who works under inventions clauses in California, my strategy is to "just sign" and "don't declare anything." I'm already careful about using personal resources for person work, so my strategy only puts the onus completely on them to find stuff and to decide if they want to do anything about it.
posted by rhizome at 2:37 PM on September 10, 2012


So I spoke with the company's lawyers, and they said that "inventions" as used in the California exception refers to the collective "inventions" in the paragraph ASSIGNMENT OF INVENTIONS, which means that indeed, they cannot claim copyright in my emails, photos, and blog posts. However, if this were not California, they would own them.

So, hurray for California!
posted by babbageboole at 4:14 PM on September 24, 2012


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