Who owns materials I created as part of a grant?
March 23, 2016 11:38 AM   Subscribe

I created a brand new program with grant money. I am leaving my employer and my boss says I don't own any of the materials. Is this true?

Last year my library recieved grant funds to create a new children's program. It was very successful and one of the coordinators from the state granting agency told me I should trademark the characters and approach a publisher.

My last day at this library is tomorrow and my boss just told me that the materials I created are owned by the library, not me. She referenced US copyright law pertaining to works made for hire. I am going to contact the person who told me to trademark it but I thought that somebody here might have some insight.
posted by Biblio to Law & Government (29 answers total) 2 users marked this as a favorite
 
You're going to need a lawyer to help you sort this one out. Don't make any assumptions without an understanding of your former employment agreement, the terms of the grant, and the applicable laws in this area.
posted by Nerd of the North at 11:44 AM on March 23, 2016 [12 favorites]


To be honest, in my experience, the intellectual property you create while employed belongs to your employer unless otherwise written into your contract or you had some sort of legal agreement with the library before you created the characters.

For example, at many universities, if a faculty member creates an online class (not sure why this is mostly associated with online classes), the university owns the slides, the syllabus, the assignments, etc. and the faculty member is not supposed to use them at another university. This has left a bad taste in many faculty members' mouths.

Similarly, when I worked at a sporting goods company, all of the designs created by a particular employees were owned by the company and in people's contracts there were a lot of threatening language about using them again (as well as non-competes).
posted by k8t at 11:44 AM on March 23, 2016 [5 favorites]


The answer to this is dependent on a whole bunch of facts that aren't present in your question.

You're obviously going to be best served by speaking to your own intellectual property attorney (and IANYIPL, TINLA), but said attorney is going to want to know things like: What kind of employee were you (contract? exempt? etc.), was applying for grants and creating programs part of your regular job duties? What did your employee agreement say when you started? Who was the grant actually given to (you, or the library?) Did you use library resources (beyond the grant money) to create the program? etc, etc.
posted by sparklemotion at 11:44 AM on March 23, 2016 [2 favorites]


Yeah you need a lawyer.

In general if you were an employee doing paid work for the library then the library owns the work. (Unless you had very specific contract language pertaining to personal IP.) It doesn't matter where the money came from for the project as long as the Library received the money and paid you your wage to work on it.

But there are a lot of Ifs only a lawyer can help you sort out.
posted by French Fry at 11:46 AM on March 23, 2016 [1 favorite]


Another question is regarding the grant - was it to you or to your library? What was the wording about the creation of the characters and how you would be compensated for the time involved in their creation? For example, maybe the grant had a line item that was $5000 - graphic design firm for 3 animated characters for campaign and instead of going to an outside firm, instead the library hired you to do this outside of your regular salary?
posted by k8t at 11:46 AM on March 23, 2016 [3 favorites]


As noted above - depends on the terms of your grant and on what IP agreement you may have signed when you started work there.

For what it's worth, my experience with grants in a university context is that generally speaking IP created under them belongs to the university, probably with some sort of caveats about the grant funding agency having some rights to use it in certain ways. It would be extraordinarily rare for any individual person working on the grant-funded projects to have any individual personal rights to the work.

Take a look at your library's IP policy, and the terms of the grant, if it's not too late to get your hands on them. That may answer the question clearly for you, and if not, IP lawyer is your next step. The person at the agency has no knowledge of your library's policies and may not have the slightest agreement of either her agency's standard grant terms, or any one-off terms that may have been negotiated for this particular agreement. They cannot provide you the information you need here.

(All of that said! If you can keep this whole conversation non-adversarial, you may very well be able to come to some agreement with the library and the agency letting you use the characters in some way. Again, all depending on the terms agreed to originally, and if the conversation goes that way you definitely want an IP lawyer.)
posted by Stacey at 11:57 AM on March 23, 2016 [2 favorites]


Response by poster: OK, this is more complicated than I thought.

The money was given to the library and I was paid in addition to my normal wages to design and implement the program. I am the only person responsible for the creation of this program. It's a totally new thing that I invented.

I never signed anything to do with intellectual property with regards to either the grant or my regular employment. I have never seen a library IP policy. I may be able to get my hands on grant documents before I leave, but I don't recall anything about IP in them. When the person who approved/evaluated the grant told me to try to publish it I assumed she knew what she was talking about.

I do not have a contract or employment agreement.

I will look for an IP attorney.
posted by Biblio at 12:27 PM on March 23, 2016 [2 favorites]


The US Copyright Office has a surprisingly good guide here. The short version about the situation is that work done for your employer in general (with many prominent exceptions) is "work for hire" and is owned by your employer. Regardless of who worked on the project or if you invented it, you were paid by your employer and your employer owns the work unless an exception applies to your or unless you and your employer agreed to otherwise.

I would suggest that any fees paid to an IP attorney would not be worth it, as you have given us no reason to expect that you have a right to ownership of the work.
posted by saeculorum at 12:36 PM on March 23, 2016 [7 favorites]


You're right that this is very complicated, especially with the facts as you have laid them out. Generally, works created by employees in the context of their work duties is automatically work-for-hire (i.e. the intellectual property is owned by the employer), while work by an independent contractor requires a specific contract stating that the work is work-for-hire, but it looks like you're in a messy middle ground, where you were an employee, but you were also being paid separately for the work. It's always the case that only a lawyer with relevant expertise can give you solid legal advice, but that seems to be especially true in this case.
posted by firechicago at 12:39 PM on March 23, 2016 [4 favorites]


When you were asked to do this outside of your normal wages, how was that money paid to you? Did you sign a contract?
posted by k8t at 1:04 PM on March 23, 2016


Response by poster: The money was added to my paycheck, although I completed a separate timesheet for those hours. I don't recall signing a contract.
posted by Biblio at 1:13 PM on March 23, 2016


Is it a public library? Under whose jurisdiction is it?

Not sure what you want to do with the program, sell it for profit or use it at the next library you work for, but this is way more complicated and involves a very specific (yours) set of circumstances that can only be sorted by talking with an attorney in your jurisdiction.
posted by AugustWest at 1:14 PM on March 23, 2016


Response by poster: It's a public library run by the town. The grant was awarded by the state with federal funds. I am asking around for a lawyer now.
posted by Biblio at 1:16 PM on March 23, 2016


I sent you an email with some local (to you) lawyers. You might also get some decent feedback by contacting the state library or one of the local consortiums because I'm sure this is an issue that has come up before. My guess is that the grant evaluator is just being sort of a blue-sky thinker and not really thinking abut the ins and outs of the IP involved. The good news is that the lack of a contract might actually help your case and not hinder it but, again, you'd need professional advice if you really want to follow up. Good luck.
posted by jessamyn at 1:26 PM on March 23, 2016 [3 favorites]


Response by poster: Oops, I had an old email on my profile. Could you send it to the email I've added?
posted by Biblio at 1:50 PM on March 23, 2016 [1 favorite]


Check your employee manual...ours has one sentence that would be hard to find.
It is under "Separation from employment"

Resignation
... "The work product completed while an employee is the property of the
City and will remain so after separation."
posted by calgirl at 2:38 PM on March 23, 2016 [1 favorite]


A lack of a contract hinders you, it doesn't help you. Work is done for hire by default, unless a contract (or some other exception) says otherwise. You don't positively release your right to your work by signing a contract, you implicitly release it by doing it as part of your job.

Again, it's not clear to me why you would have any right to ownership of this work, since it was done as part of your job. You may consult a lawyer, but be mindful that it may cost you money for no obvious gain.

As a practical matter, if you decide you do own the work and the library also believes they own the work, you will still be liable for legal fees if the library decides to sue you.
posted by saeculorum at 2:38 PM on March 23, 2016


That the grant was awarded to the library, and not specifically to you, I think, is where the answer lies. The library most likely owns the property.
posted by Thorzdad at 2:54 PM on March 23, 2016


Response by poster: I went through the paperwork for the grant and and my employee handbook. Neither mentions anything about intellectual property. I had no expectation of being able to keep the material until the woman from the state encouraged me to get it published.
posted by Biblio at 3:25 PM on March 23, 2016


I think in general the answers above suggesting that the library owns the rights, the works being work for hire, are correct. That doesn't mean you are out of luck.

What you don't want to do is get into a legal battle somehow. It won't help anybody and you would lose IMHO. The better approach would be to talk to your boss and suggest a joint approach to marketing the materials. You need them, because they own the rights. But they need you, because you created the characters, stories, materials, whatever it is, and you are the best person to continue that creative process with more characters, stories, materials whatever it is.

So, propose that even though you are moving on, you'd like to work with them, on your own nickel, to see if there is a wider market for this material, as potentially augmented, improved, expanded by you. If so, naturally, you'd like to share in the proceeds, and this would be mutually worked out after there is some indication there is a market, but before any deals are made. The local library is not in the business of making national deals around creative content. But you are (or want to give it a try), so why not team up?
posted by beagle at 3:34 PM on March 23, 2016 [10 favorites]


I went through the paperwork for the grant

This isn't really of too much import...you (presumably) got paid for your time working on the library's grant application.
posted by threeants at 5:51 PM on March 23, 2016


I had no expectation of being able to keep the material until the woman from the state encouraged me to get it published.

Hi! I work for the government, and one of my roles is doling out grants. I understand the mechanism of the grant, but know less about many of the results of the grants. I think you're putting a little too much emphasis on the opinion of one enthusiastic person. I'm guessing this person, like me, likes to hear about successful fruits of the funding that she distributes. Further, it seems like an obvious next step to want to share that successful product with others! If it is successful at one place why not take it elsewhere? This means less than nothing about whether you *can* take it elsewhere. It just means you have an enthusiastic grants administrator who is happy to see her projects yielding successful results.

Though you may consult an attorney, what about this as a suggestion? Ask the library what they would consider fair compensation to allow you to trademark the character/program you created. Offer them perennial use of the character/program for their library and some amount of money. It sees like a good place to start would be at about double the amount of wages you got from them for working on the project.

Alternately, most libraries I know wouldn't have the time or resources necessary to trademark a character and work on marketing the program to a publisher. What about working out a profit sharing deal with them? Offer them 60% of the hypothetical proceeds (it was, after all, their risk in paying you to create the program, not yours) and suggest that both you and they be credited on the materials, with it clear that you were the author. If you've created one successful character/program once, I bet you can do it again - just get this one published, share the profits, and use the existing relationship with your hypothetical publisher to get the next project started.

Whatever you do, write the contract out on paper and seek an attorney to make sure it is written fairly for both of you.
posted by arnicae at 6:24 PM on March 23, 2016 [5 favorites]


I work for a non profit where we sometimes get grants to fund development of new programming. This situation would clearly fall under 'work for hire' as spelled out in the employee handbook, and anything I created would belong to my employer. (Also - since in my work I frequently see documentations of patents from the 1950s-80s filed by (or on the behalf of) Westinghouse employees, I can vouch that they got paid, by Westinghouse, a whopping ONE DOLLAR for each patent earned as part of their work for the company. Massive defense innovations which earned the company gazillions of dollars. The inventor got $1 because it was work for hire. But they knew going into the job that it would happen that way.)
posted by AliceBlue at 6:38 PM on March 23, 2016


Are you sure there's a market for this kind of program? If libraries are your target audience, it's not like they are rolling in funding right now.

It may not even be worth paying a lawyer without determining if there is actually a market for this kind of program.
posted by guster4lovers at 7:43 PM on March 23, 2016


The fact that the library owns the creative work (assuming this is true) does not necessarily end the possibility of publishing the work. But it does mean that you would have to pull the library in as a partner of some type, make an agreement about how any proceeds are split, who has creative control, etc etc etc.

Just about anything you and they mutually agree to can be made to work. Obviously if they won't agree to anything then that leaves you in a difficult place. But the first place to start would be to simply ask them if they are interested in partnering on this going forward.
posted by flug at 8:57 PM on March 23, 2016 [1 favorite]


I think you will find that this is 'work for hire' if you did it while employed by the library regardless of whether or not you were paid from the grant in addition to your regular job or had a contract defining ownership. Was this an LSTA grant via IMLS? These grants are given to library systems/libraries, never to individuals. I have been paid many times with LSTA funds and everything I did belonged to the library that received the grant. This includes creating original curriculum, bookmarks/booklists, research reports, original programs & their supporting materials, & other library-related material.

Did the grant require a credit line on the materials? IMLS & our state library require that attribution on everything produced with an LSTA grant. I doubt a state library would look kindly on someone trying to copyright something paid for with an LSTA grant (or other federal funds) with the expectation that the grantee would then sell it back to libraries either in-state or out-of-state, unless that was clearly stated in the original grant. And then it would be cost-recovery, not profit. The purpose of LSTA is to advance library services in the broadest possible way, depending on the priorities each state defines in its LSTA plan, by providing money for creative new programs & products. It would never be for the benefit an individual. Your creative program & characters are exactly the type of thing these grants are expected to do--show innovation & share it with the library community.

Creating things with a federal grant (which is what LSTA is, administered by the state) has its own set of rules. Generally with the big IMLS grants you can copyright what can be copyrighted, but the expectation is that "All work products resulting from IMLS funding should be distributed for free or at cost unless we have given you written approval for another arrangement." (https://www.imls.gov/grants/apply-grant/fy15nofolinks) This is not exactly the same as the grants to states from IMLS, but it is generally followed by state libraries for LSTA-funded materials.

If this was a federal Dept of Education grant, that department has even more rules for grants & grant products.

You had no expectation of 'owning' this work prior to the 'lady from the state' who admired your work. She probably doesn't have all the information she needs to offer you advise. I think you are better off coming up with more creative programming/product ideas and approaching a publisher with those (and using this product as a successful example), rather than hiring a lawyer to fight a battle you probably won't win. Spend your energy on creation.
posted by Nosey Mrs. Rat at 9:30 PM on March 23, 2016


You were paid for the time you spent developing the product. The grant used to pay you was issued to the library. I would be shocked if you have ANY legal rights to any of it. I'm sorry.

If you're passionate about spreading what you created and not in it for money, you could try working out a deal with the library to share profits, if any.

I would seek a free consultation with an attorney just to be sure, but I wouldn't pay for a consultation as the answer is 99% likely to be that the library owns all the rights. Most lawyers, or at least their legal assistants, will give you one free consultation though.

I agree with most people though - you did it once, you can do it again! If you consider doing a new version that is similar but not exact, I would definitely consult with an attorney on how different it would need to be. You do not want to deal with the cost of a lawsuit you're likely to lose.
posted by Georgia Is All Out Of Smokes at 2:04 AM on March 24, 2016


I am no expert but my take is this, you will need to filter it through the more detailed reality that you are privy to in your specific case:

1. Your (soon ex) boss is not going to be putting a tonne of effort promoting or developing this work beyond its current scope, there is no percentage in it for them. It will sit on the library computers and gradually fall into obscurity and disuse.

2. You created it once, so you know the inns and outs and the workflow will be quick the second time. Instead of "Select your book with Library Larry the Labrador", it will be "Have fun reading with Booky Bertie the Beagle". He has a red shirt, not a yellow one, etc., etc.

3. Trademarks, copyrights, publication of your new thing. Will it get big? Unlikely. Your ex-boss will never see it and if she does there is no percentage in her spending library time and money chasing after you. If it does get big you can afford the lawyers to slap them away.

Have fun, good luck! Remain standing!
posted by Meatbomb at 8:41 AM on March 24, 2016 [1 favorite]


Grant writing instructor and former grant program officer and grant writer here. If the grant proposal was written while in the employ of the library and was awarded to the library, the library 'owns' the grant program. You were simply the project manager - they'll replace you on the project when you leave. The only way this project could be transferred to you directly is if the library agreed to it AND the funder approved. They won't. The library is a nonprofit and you are not. That's usually a requirement for getting the grant in the first place. Sorry - I know this isn't good news.
posted by summerstorm at 9:13 AM on March 24, 2016


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