Depending on your country and state, as well as your employment agreement, there are a lot of impactful variables. Intuition and personal relationships are not going to help you solve this issue, especially, absent knowing the law and your position.

1. It never seems to be accompanied with advice on how to find the appropriate kind of lawyer. 2. It almost always seems to ignore the fact that lawyers are expensive. Sure, there are times when that cost is warranted, but I don't think it is right to ignore it. For example, in this case, it is probably only worth consulting a lawyer if the amount of compensation on the line is significantly more than the amount the OP would pay the lawyer. And what if the person you are advising can't afford a lawyer?

Also, concerning your metaphor, I would not just immediately say "find a programmer". I would find out what kind of website they wanted, then depending on their technical skills and what they wanted (and how close a friend they are) I might teach them how to make a website themselves, or point them toward more user-friendly tools to create websites. I'd only suggest they hire a web designer if they needed something really complicated or didn't have the skill or time to learn how to make a website themselves.

If you can't afford a lawyer you might as well roll over right now because that will be the end game.

The idea that some advice given in an online forum would reduce the need for finding a lawyer is akin to taking medical advice from a forum. You have no idea what the qualifications/experience/jurisdictions are of the people giving you advice so it might be good/neutral/detrimental.

Get a lawyer, one that specializes in IP and if possible to find those skills in one person as well as in employment law in your place of residence.

In the UK, most of my lawyer friends would tell you that lawyering up is the last course of action you want to take, as it tends to make issues more complicated, expensive and combative, though you might want to be careful what you admit / agree to.

My wifes a solicitor. :)

Your employer doesn't even need to know you consulted a lawyer.

* OP is in the wrong and employer can't afford to pursue further. OP loses a lot of reputation as word spreads.

* OP is in the wrong and employer can't afford to pursue now. Five years down the line, when Oracle acquires employer, OP is sued for five years of damages.

* OP is in the right, but employer's lawyer crafts a very intimidating and compelling legal letter. OP backs down, having blown the relationship with the lawyer, loses rights, and is fired two months later.

It's helpful to be able to say "no" with conviction if one is right, or not press an issue if one is wrong.

Not sure if the incentives are the same in the UK, but in the US, most lawyers retained in matters like this work for the client.

In that lawyers advise, the client decides, and then the lawyers attempt to realize the goal the client has chosen (if they decide to keep working for them).

Most people in the US seem to look at legal counsel as "Do what the lawyer says," when it's actually "listen to what the lawyer says, ask about alternatives, and then choose the course you want to take."

Or as I've heard it explained: a lawyer's default is to counsel the courses of action that will allow them to win a hypothetical jury trial two years from now.

When in reality, most things never get there, and some optimal courses of action for trial are antagonistic in a pre-trial context.

For the record, I've used solicitors before and it was a ball-ache. The first thing they tell you is the judges want you to have at least made an attempt at discourse before you can go to court.

In the UK you're entitled to 1 hour of free legal aid, so it's hardly expensive to consult with one who can direct you to the right person and place.

Listening to doctors instead of carefully reading forums would have probably left me seriously crippled. Doctors hold no real liability, nor do they have any real expertise outside their (very narrow) problem domain.

There is no substitute for doing your own research if you want something done right.

As for doctors not having real expertise outside their (very narrow) problem domain: that's precisely why you want to see them if your problem is in that narrow domain.

Finding expert doctors and relaying updated information to family doctors doesn't work too well either.

No, if I have a medical problem _that is serious enough that it is worth the cost_ I go to a doctor. I don't go to the doctor for every cold or headache I get. Granted the OP is actually a case that might be worth that cost, but I've seen similar advice for much smaller things. I mean, I've asked questions about IP for my hobby open source projects, from which I don't expect to ever get a penny, and been told to get a lawyer. Or in this case, say compensation was off the table, is keeping ownership of the project worth hundreds or thousands of dollars for consulting a lawyer? Maybe. Only the OP would know that. And even after consulting a lawyer it's hardly a sure thing.

I'm not saying you should take legal advice from forums. My problem is with the "Always always always talk to a lawyer." Maybe you have enough money to talk to a lawyer every time you have a legal question and see a doctor every time you have any kind of malady, but not everyone does.

And I guess part of my complaint is just that such an important service is so expensive. It leads to a situation where the well off can hire lawyers to consult them on things like employment contracts, but those with less money can't, which makes it easier to exploit them.

1) The employment agreement 2) Understand the degree to which the specific project overlaps with the employer's business 3) Etc.

That takes a conversation you don't want to have online.

But yes, I definitely to seek legal advice from forums, Nolo books, and similar. Self-serve law is not a bad idea in most cases, despite advice to the contrary. Just not in THIS case.

If a company wants to formally acquire the rights to the IP.. it's safe to say it's worth something.

Your #2 reason is tricky because individuals who need the advice to seek out a lawyer already don’t understand the value of having a lawyer, so they have no way to gauge the financial cost of hiring one. That makes a lawyer seem very expensive, when in reality sometimes the risk of not having one is much greater than the cost.

A few years ago I had a side project I wanted to turn into a company, but not enough money to do it full time. So I applied for a job. The employment contract they wanted me to sign had a non-compete that was vague enough that my side project would be in conflict with my job.

I was very worried about spending $2k to hire a lawyer to write an exclusion clause into my employment contract. It seemed like a lot of money to me. But I did it, and for the money I got a single paragraph of text that excluded my company from ever being considered “competition”. (Actually the real value was not the text, it was that my employer knew the text was written by an employment lawyer, so they accepted it and didn’t push back.) Later I left that job to start my own company, and then sold it a few years after that. Without the clause, I could have risked the entire thing. In retrospect, it was some of the best money I ever spent, worth every penny.

The cost argument is a fair one, and I think that's worth considering. In this case, though, OP has indicated that this is a project that he feels has some amount of value, so it's worth spending $300-500 for a consultation with a lawyer. I'd try to look at it from an expected value perspective - even if paying $500 only has a small chance of improving the outcome of your negotiation/case, if the value of the thing you're negotiating over is $25000, it's worth spending. If the value of the thing is $600, then don't bother.

In terms of finding a lawyer, upcounsel.com, avvo.com or referrals from friends are good places to go.

https://www.lawson-weitzen.com/attorney/bauer

He gave me terrific advice on a similar issue many years back, and I've gone to him a few times since. I've never retained him: our conversations were always about knowing how to interpret employment contracts, understanding options, and coming up with a negotiation strategy. After those consults, I could go it myself.

A good lawyer won't drag you into litigation. Good lawyers are rare, but the goal should always be to appear professional and to preserve relationships. If you have the rights to your code, you should be able to maintain them without burning relationships with your job. If you don't, you should hand the rights over without a fight (or negotiate for rights, but understanding you'll need to compromise something in return). In either case, you'd like to keep working there, you'd like good references later, and you'd like your employer to stay in your network.

You can't do that unless you understand your legal rights, and unless you have an idea of what tactics you should take.

A good lawyer will run you $300-$600 for a conversation (1-2 hours). A bad lawyer will escalate to a conflict, and run you tens or hundreds of thousands of dollars.

Keep in mind law varies by jurisdiction. I don't know where OP is, so this recommendation may be moot. I've worked with many lawyers. I have no conflict-of-interest (my relationship with Bauer is limited to a small number of ~1-hour consults).

If you screw up your legal diy the consequences are much much worse, and often unfixable.

Eg. Where would the internet be if only programmers built websites?

The tricky part is probably finding such a good lawyer and coming up with the money to pay them.

Edit: to add to you second point: If "legal" and "fair" are so different, that's exactly why you can't rely on your intuition but need to consult an expert.

This. Anything you say. Anything at all. Can. And will be used against you in a court of law. Your job wants your code. Personally I would lawyer up and start applying for new jobs elsewhere and ensure they wont pull the same. Just never work on code from their hardware on their resources (internet, power, etc).

And when you sit down with the lawyer, make sure to bring your employment contract and IP agreement. They'll need those to give you any informed opinions.

I probably should have cleared this out in my original post (my bad) that I do not wish to pursue the legal route. I personally feel that in my case, it will just drain everyone's energy for not much gain at the end. Also, personal relationships matter to me as well.

I'm trying to find ways to get compensated for the time and effort I've put into it. If not financially, then in some other forms. But I don't have any ideas.

The way you use that leverage is then explain why you feel something is not fair. In a professional context, you can explain your position in legal terms when you take a compassionate, kind stance, smile and analytically explain the situation from both sides.

It's no more different than handling a code review.

Now, two things can happen: Either your employer is amazed that you both created a new product AND can navigate business negotiations. This is good for your career (unless your employer is an idiot).

Note that creating a new product that people love increases your market worth tremendously (unless you are already at a fairly well compensated level).

Traditionally the simplest way to compensate employees has been to give them a raise. Hint - you could ask this :)

The funny thing a higher pay grade does is that suddenly management will respect you more (we pay him x dollars so he must be awesome).

Or, the second case: you find out your employers 'mr. Niceguy' culture is actually a charade to fool people working at below market rates. At which point the fate of your sideproject totally depends on the legal feedback you received. And it would be better for you to find a better employer.

There are really good books on negotiation and influence. I suggest you read them when you have the time. Examples: Cialdini, 'Influence'. Voss, 'Never split the difference'.

The employer might be under the impression that all the terms in the employment contract they pulled off FreeLegalTemplates.net are enforceable when they aren't. Going to a lawyer first gives you the ammunition to politely point out that you are in fact the one in the right here.

If you don't want to spend money on lawyers, at least read all relevant laws (which is important even if you have lawyer around you).

It's also better if your company doesn't know about your preparation, as it can be used as defence weapon in the negotiations only if you would get a worse position than what you have rights for anyways. Preparing in secret also helps you get more evidence for your case.

A 30 minute session with a lawyer will give you much more insight in to how to deal with this situation more than what you can learn from an internet forum.

If you don't want to do even that then my advice to you would be to hand over the code, fork it, leave this employer and call it a day.

You may have to reset your expectations about walking away with both compensation AND control.

You should do so as well, to be on the same footing. This lets you negotiate with confidence, you'll understand your BATNA and the terms of your contract with the business.

We can't even begin to think about the answers to this question with knowing what state the employer and/or poster are in. Nor can we begin to think about it without the specifics of the application and the field that the employer develops in. The ultimate conclusion of this will ultimately boil down to minutiae. Minutiae that we are neither privy to nor have the knowledge or experience to reasonably discuss.

He needs someone who understands the law and the specifics, and who has his interests in mind.

One thing to consider- spin off your side project and try to get your employer as your first customer or as the exclusive distributor.

But your employment contract should have an IP provision, and that is going to be 99% of any outcome.

But IMO it's still worth talking to (2 or 3) lawyers which specialize on the subject[1]. It gets expensive only if you decide to fight - and you don't need to make that decision just yet.

Just asking a legal expert to review your case isn't going to be outrageously expensive, but gives you a better understanding for deciding if this is worth any risks. And it would give you also a clear picture about how to protect yourself for any future ideas.

[1] I have a rule which served me well. Interview (review) any legal adviser, accountant or consultant that you might want a professional relationship with. After talking to several people you know exactly the questions to ask them to decide if they are a good match for you. Also ask them for client references and a sample invoice they have issued for similar cases. Do these discussions always in person (over a coffee) never online. The first consultation has always been free for me (idk how it is in the US though).

I've heard this many times before but what are the limits to this? Say you work at software company x and on the weekends at home you are coding a project completely unrelated to work, a dating app, a mobile game, whatever. How can any contract be all encompassing as to legally allow that?

Of course at least one and possibly more of those three things are not true for the OP, so that may be a different situation.

Whenever this topic comes up on HN, all these armchair lawyers come out of the woodwork and start making blanket statements about what they are "pretty sure" is allowed, but this issue is dependent on what's in your contract, and what your national and/or local laws allow companies to claim. "Talk to a lawyer" is the best answer to something like this.

So even if the legal opinion is that you don't have a leg to stand on, you could still get everything you want if your employer agrees to it. I would try to negotiate from that stance, instead of a legal one. So "yes, boss, I understand that contractually the IP is yours, but the community is mine, and the goodwill is mine, and the IP is worth nothing without those, because the community will just fork the code. So let's talk about how this is going to work..."

Agreed. That's probably the best advice for any non-trivial legal issue or question. I hope no one read my answer as contradicting that.

That said, is there _any_ example, in _any_ jurisdiction where a court has upheld an employer's right to IP that meets those three criteria (employee's own time, own equipment and unrelated to the employers business)? I would hate to be in position where I'd need to find out, but I'm curious if this has _ever_ been tested in court. It just seems like a ridiculously over-reaching claim.

It was a long time ago, so I may be slightly misremembering the exact details, but in a nutshell the example given was someone who did have to hand something over because a court decided that being a salaried programmer using a certain programming language at work meant something they programmed in that same language at home was related to their employment. The software itself was in a totally different field to what they did for work, so their assumption had been that it wouldn't be covered, but the court didn't see it that way. I'm in England and was talking to an English lawyer about English employment, so I assume that was also the location of the case mentioned, but I'm afraid I don't know anything more specific to provide a proper citation.

I was also warned that this is a bigger problem for employees of huge companies with many divisions, because in that case the employer could have interests in a wide variety of different fields that would be relevant for contractual purposes. Even though any given employee might have no knowledge that something they're doing out-of-hours could be affected, because it's nothing to do with what they do themselves and what happens in their own part of the business, it can still be relevant from the employer's point of view and so trigger the contractual transfer of IP rights.

Yes. There are places where either by statute or by the employment contract, anything the employee creates belongs to the employer. The underlying concept is that the employer created an environment where the employee was able to learn and be inspired.

I know personally of a situation where a university exercised this right, although I don't know if they did it through statutes, common law, or an explicit agreement.

Don't get me wrong - I believe you - I'm just curious about it and would like to learn more.

I tried to Google for some other examples, but (as usual) Google mangled my search into a completely unrelated topic.

Does this also mean that if a programmer will write a song at weekend, his employer will have the copyright? Because I see no difference.

The example I knew about was something that could plausibly have been done using the university's resources, but it wasn't.

While it does seem crazy, a common legal practice is to create incredibly rigid, selfish policies and then decide later if it's worth enforcing them. I was often told as an undergrad that anything I did was partly owned by my school, but that I shouldn't worry about it because they'd never pursue me.

Yeah, but parent here states that even if an employee wasn't using any employer's resources, the rights are still belong to the latter. Which is a whole other level of insanity.

On an unrelated note, university owning any work of a student, regardless on how it was done (unless it was explicitly contracted with the uni), is also pretty grim, but this is probably US thing.

There are limits to how much the university can profit from the IP, and the student researchers still get to profit too.

An obvious example in the U.S. is that even if you have a contract saying you have to work for someone for no pay, forever, with no possibility of getting out the contract, it would be unenforceable because we, as a nation, have decided that slavery should not be legal.

It turns out, many of these un-contractable issues involve the employer/employee relationship... another example: even if you sign a contract saying your employer doesn't have to pay you overtime, that provision would be thrown out if you challenged it, and would probably get the employer in trouble with various agencies, including the IRS.

I am a lawyer, but I don't have experience in this field, and this is not legal advice (you have to hire me for that), but this issue seems like one that a court (depending on the state, no doubt) would find that it doesn't matter what the contract says, an employer can't own everything an employee does.

To emphasize: this is NOT legal advice, don't rely on it, and you really should seek counsel if you are encountering this issue in real life.

Again, I don't actually know for sure - I'm not an expert in this area of law. But I think there is enough evidence in the rest of (U.S.) employment law jurisprudence to indicate that it's not open-and-shut in favor of the employer.

In this case in my state the employer should at least have paid for all the time out-of-work in which op worked on his IP, and with a rate established by op

Employment contracts in particular are subject to a lot of restrictions and protections regardless of what the employer makes people sign, because labor laws.

In this case, giving up IP you made in your free time requires a new contract, because the law also requires a purchasing contract to have clear parameters

https://www.urheberrecht-leipzig.de/urheberrecht-nutzungsrec...

It is absolutely routine for employment contracts for software developers to transfer the corresponding IP to the employer. It's the main asset the employee is being hired to create!

It is common in fair and reasonable employment contracts for the standard for what is covered to be something like anything done on work time, using work resources, or related to work activities. The legalese varies from place to place, but if the employment contract includes wording like "in the course of your employment" then it probably means something along these lines, again depending on your local laws.

Some employers do try to include much more wide-ranging grabs, potentially any IP created by a salaried employee during the period of their employment. I normally recommend against signing any contract that includes these, not least because it says something about what type of employer you're dealing with. It's true that the situation is less clear in this case, because in some jurisdictions such terms might be considered overly broad and so not stand up to challenge, but you really need a local lawyer to advise you about this because the rules vary widely from place to place. In any case, since OP has told us that the project in question is directly related to what they do at work, this aspect probably isn't relevant to today's discussion.

OP, I'm sorry to be the bearer of bad news, but unless there are important details you've omitted or your employment contract is unusually liberal, you probably don't have much of a leg to stand on here. It's quite likely that your employer has actually owned all of the relevant IP from day one.

That would probably mean you wouldn't be entitled to any sort of compensation for it. (This isn't to say that your employer might not offer something to maintain good will and keep you on-side, but that's a different matter.)

More than that, it would potentially also mean you never had any legal right to open source it yourself, if the copyright was never yours so you never had any power to license it. That in turn could mean anyone redistributing it has been infringing your employer's copyright all along and the employer could even sue them. The employer could also take the whole project back closed source, or do anything else legal they want to do with it. (Again, this isn't to say they will actually do any of these things, but the employer being nicer than the worst case isn't a problem.)

On top of all of that, if the project is in any way in competition with what you do at work, you may have violated other conditions of your employment, which as with so much of this stuff may end up changing nothing or could have quite profound implications.

Short version: You do need a local lawyer who works in this field, right now. They will help you to understand your real situation, which no-one here can do properly. They may well advise you to simply hand everything over, and perhaps to seek some sort of written confirmation from the employer that they don't consider you to have violated any other aspects of your employment contract and the matter is then settled. If your employer is into open source and sees the value in the community you've built, you might get away with that. On the other hand, if they're sufficiently aware and litigious to go after your project in the first place, things could be much worse, and then you definitely want to have proper advice before you do or say anything else.

I'm not sure which European country you are referring to, but as a German I'd look at you funny if you had the audacity to put something like that in an employment contract (but honestly, I very strongly doubt any employer would do so in the first place).

I signed the contracts anyway assuming that most likely the company would not be interested in what I created outside working hours (or even know of it) and that they would only get interested if it becamse really successful, in which case I would probably have the means to defend it.

No, but should be likely that it is, right? Not worth the risk to put such clauses in there otherwise. And I was talking about the UK.

In Germany, you need to make a new contract with explicit payment

https://www.urheberrecht-leipzig.de/urheberrecht-nutzungsrec...

Is the state 'intruding' when they preserve your other rights?

You are now in a negotiation, and so "what can I ask for" is largely determined by "what is the BATNA,"[1] i.e. what happens if you and your company fail to reach a mutually acceptable compromise and start acting purely in your own respective self-interests.

This will partly come down to legal issues (can the company take over the IP from you), but for an open source company, I would speculate that reputational issues from a "hostile takeover" of another OSS project could change the calculus substantially. If the company takes over the project by force, and you publicize the fact that they did this via the IP clause of your employment contract (which most developers regard as somewhat evil), that doesn't seem fun for their PR team. Even worse if you'd be able to fork the project.

Of course, this depends a lot on the details of your situation, so you should definitely find someone to talk through the details with who is good at negotiating. Just not sure if a lawyer is the best/only person to talk to.

[1]: https://en.wikipedia.org/wiki/Best_alternative_to_a_negotiat...

But no matter what's in your contact, that route is probably not your best option. From what I understand, you created, in your own time, a project that is valuable to your employer, and that they want to use and develop. You're the expert on this project. Not just that, you designed every aspect of it, popularised it, and your employer apparently likes it enough to want it. These are valuable skills. At the very least, this should imply a nice raise. Perhaps a promotion. You're the natural PO and the natural lead developer for this project.

I would discuss this with your employer. See if they're willing to give you a nice promotion with this project as your primary responsibility and an accompanying raise. Maybe a bonus too.

Entirely this.

I got burned by this years ago, developing side project that was completely unrelated to the sort of work my employer did, and was not developed using any company resources. But my employment contract specified that my employer had first rights to anything I developed at all during the term of my employment.

From that time on, whenever I'm negotiating a new employment contract, I make sure that any such clause is omitted from it. I've never had an employer completely balk at that, although some have negotiated a middle ground where they get first rights to a time-limited exclusive license to any side project I do that does overlap with their activities.

This sort of thing is why I advise people to actually read and understand employment (and all other) contracts before signing, and to not be shy about requesting changes to them if the terms aren't acceptable.

Also, don't listen to verbal assurances like "that's just boilerplate, we never actually enforce that". That may or may not be true at the moment, but there's no guarantee it will remain true over time. When the rubber meets the road, what the contract says is what will happen.

https://lists.sfconservancy.org/pipermail/contractpatch/2018...

Software Freedom Conservancy reminded me that everything is negotiable:

https://sfconservancy.org/contractpatch/

I was thinking along the lines of "Hey, I periodically do volunteer work for various charities, and I think this clause could hurt them. Could we add in that work not directly assigned to me and is related to a non-profit / charity is excluded from this clause?"

That way, if anything comes up, you could turn over copyright to the FSF or similar organization and you would be covered.

Thank you for your answer. Could you please elaborate on this one? What does the exclusive license entails? Do you get ownership back when the time expires?

When the exclusive period is up, that doesn't mean the license is inoperative, only that I am free to license it to others as well.

Note that when I say "I" here, I really mean my attorney. These sorts of things can be tricky, and I am no lawyer. Also, it's very hard to make this sort of thing foolproof -- if an employer wants to screw me, there are a few ways that they could.

That's a value judgment that others might not share.

Also, that's easy to say if you have a steady, secure job that pays well. But if you don't, and you need a job else you might not make your next rent payment, maybe you can't be so picky.

Same deal if all the desirable jobs in your area have clauses like that and you can't or don't want to move.

Yes. Early in my career, I had been in this situation a couple of times. What I did then (and would do again) is to suspend any work on such private projects entirely until I can find a job with a more reasonable employer.

Italy for example has a blanket "we own everything" statement on the standard collective contract, and to work around that you need to write an agreement and sign it on the side (not on the main contract) or it won't stick in court because all clause against the collective contract are considered vexatious by default and require special care

California, for example, does not allow contracts for ownerships of things done on your own time, your own equipment and not related to your employer.

This would have been natural but the timing of this could not be worse. I just got a raise (last week) and I doubt they will consider anything more. They gave me a raise because I was doing good work for other things. I've serious doubts that there would be any financial barter possible.

I'll probably the lead for the project and my managers are fine with that. Promotion is something that I've considered either so thank you for that suggestion.

Think "perks" rather than "salary".

Seek legal advice from professionals.

As much as I hate to say it, that doesn't sound like a side project. That just sounds like overtime.

In hindsight, I also made some mistakes in how I went about evangelizing it.

It sounds like the author implied the company actually had something to do with whatever it is. That definitely makes it an unsanctioned overtime project rather than something separate like a side project.

Is it overtime if you were never paid for it? How does unpaid work have to be 'sanctioned'?

Sadly, for programmers in the US, overtime is essentially always unpaid. When you e.g. hear about game developers doing 80hr/week crunch time, they're not getting paid extra for that.

Going that route, maybe the company could pay for the work done on the project.

If the company really want to act in good faith, as reading between the line I assume you believe they do, they would have opened with an offer or some sort of compensation.

Instead they flat out asking you to transfer your work over means they knew and has already calculated the consequences.

Sorry to be cynical, as others have point out go and talk to a lawyer.

As an employee, if you put a lot of your business and technical knowledge (that was acquired while on the job) on a large side project effort without your employer's consent, you're playing with fire, because you may be transferring business advantage from your employer to the outside world, including the competition. You put yourself in a position where you could even get sued if things go badly (specially if your project is a potential money maker)... See the case of the Nginx author, who just got himself into similar trouble...

In conclusion, I think your safest bet is to, as everyone is saying, talk to a lawyer... not to threaten the company, but to protect yourself and hopefully come to a friendly agreement at the end!

How have they responded when you told them:

* I'd like to keep roadmap control

* I'd like to be compensated for the work I put in on my own time out side of work. (which is well documented from the commit logs, and the fact I wasn't using an employer owned computer)

* I'd like to keep working on this on my own time outside of work.

If you are worried about long-long term, i.e. the time that exists after you leave the company, with the right software licensing strategy it's likely you could fork the project down the road and retain roadmap control of at least a fork of the main project.

You may want to consider working with your company's lawyers to choose a license (you can re-license open source software -- https://opensource.stackexchange.com/questions/33/how-can-a-...) or figure out if the Apache license meets your needs.

Short term it sounds like the outcome is pretty clear, long term seems like you have a lot of options.

The company overall is quite stingy and I doubt that they will do this part. I'm trying to figure out what other things that I can ask for other than financial compensation. Someone mentioned Promotion and a positive review is something to ask for, which makes some sense. The only problem is according to my review, I'm already exceeding expectations. So, this project doesn't buy me much.

Overall, they are fine, and kind of, want me to drive the project, essentially because there is no one else who can do that job.

* The company agrees to pay you for adding some extra features to the project

* You keep control and exclusive rights, but give them a license to use it (but not transfer it to others)

Edit: even if they legally can claim full ownership of the project, you have the full right to resign and go work on something else after they do so. And if this is not what they want, you will have pretty good chances negotiating a non-exclusive deal instead.

One last piece of advice:

=== DO NOT AGREE TO ANYTHING WITHOUT A LAWYER ===

Many companies would consider it business as usual to agree on your terms verbally and then slip in a clause in the contract that would completely change the balance in their favor.

I'd concentrate on the positive rather than the negative, that if you get to work on this project via your employer from this point on you'll be getting paid to do the thing you were doing for free.

Getting paid for past work seems unlikely. You already admitted you didn't care about compensation by open sourcing the project. You were willing to give it to anyone, including your own company as open source. Not that you can't ask, maybe they'll be nice about it, but just saying it's strange that before they asked you were giving it away for free to any company and now that they asked you want compensation.

To be harsh you arguably did something wrong by making something that directly competes with your employer. It doesn't matter that it was on your own time. It's called a "Duty of Loyalty" and basically means you can't get paid as an employee and at the same time stab them in the back by competing with them.

https://www.google.com/search?q=duty%20of%20loyalty%20employ...

Maybe you don't think it competes but you said yourself it directly relates to what they do so yes, as you admitted, you've cornered yourself in a bad place.

Some companies, like Google, have an easy way to get a signed contract saying they will not claim interest in your project before you start (or they'll point out it's a conflict of interest like if you said you wanted to make a cloud based mail service ... in which case my guess is they would try to get you to join the gmail team, contribute to it, or you could quit and start your cloud based emails start up). The point is they are upfront about the legal issues and provide a way to work out a solution. Most companies don't have a procedure for this until it's too late.

"As part of your employment agreement, Google most likely owns intellectual property (IP) you create while at the company. Because Google’s business interests are so wide and varied, this likely applies to any personal project you have. That includes new development on personal projects you created prior to employment at Google. However, we understand and sympathize with the desire to explore and ship technology projects outside of Google."

If you have to abandon what you've done, leave, and recreate a new version, would not take you two years. Two months? Less? Not saying this is what you should do, just that you consider what it would entail, if you handed the company your side project and then left to go re-create it from scratch, with all the lessons learned from the first time.

[Manager Names]

My time at [Company Name] has been a great experience. It has been a pleasure working with you. As you may know I created [ Open source project ] on [Date] and have enjoyed growing the product and user base. Building and supporting successful products is something I enjoy and will be looking for opportunities to do that outside of my current role. [Day 2 weeks from now] will be my last day at [Company]

Best of Luck

Then you can negotiate from a place of power. Don't say anything about your plans other than that you are going to pursue other opportunities. At a minimum they will make you a counter offer, something like 10% pay increase and a new title of "Product Director". It is up to you if you want to negotiate something different like back pay or if you want to try to create a new product from scratch on your own or if you want to find another job.

OP: My employer wants IP I've created. I want to negotiate compensation for it.

Your advice: Start by sending them a resignation letter.

Negotiations are all about relationships and starting by triggering others fears of abandonment is not the way to collaborate to a mutually beneficial option.

I would suggest that the OP asks the if the employer would be open to discussing what he wants "given the additional value I'd be providing the company, I'm wondering if we could discuss my compensation and control over the project and any interests you may have?", and seek legal advice if he's not confident asking.

It's important that the as initial ask is not phrased as anything extortionary ("give me x or I will/won't do x") as that kind of talk is more likely to trigger legal concerns.

Negotiations are about leverage. Having a good relationship with someone is great. But they are not going to give you a big chunk of money because the like you. They are going to give you a big chunk of money because they need to you stay on when you are on your way out the door.

On the other hand, it is usually not legal for the employer to have any right over what employees do on their free time, provided no resources from the company (phone, laptop,...) have been used.

You have two other options: 1. You can stop immediately. Just say you are no longer maintaining and supporting it for free. You can work on it on company time. If anyone wants to pay you for your personal time to work on fixes and bug-fixes they wan, they can, at which point you can do that work, and release it as either part of the open-source project you have, or as a private fork for that customer.

2. You can quit your job. Go work somewhere else who is willing to work on your own open-source projects on your own time and maintain IP. Then, abandon the project since it no longer belongs to you. Your current company is the copyright owner. Start a fork, which will now be yours, and you're the copyright owner of any new code, including changes you made to the old code. If the original license is permissive, you are under no obligate to contribute back.

Having said all of that, this is not what I would personally do. I would be happy that the company I work on wants my work so bad that they're asking for the transfer of ownership back to them. I would tell them that shouldn't be a problem but you'd like something for it, such as being able to work on it on company time, etc. Otherwise it sounds like they just want to own this thing you created and have you continue to work on it for free on your own time indefinitely, which I don't believe is what they're asking for -- you weren't clear about that.

I personally believe that going to a lawyer at this stage is 1) expensive and 2) unnecessarily confrontational. I understand the argument about understanding your legal options, but at the point where you start to rely on the law, you're entering a contentious negotiation which can be unpleasant and expensive for everyone.

So I'd just say "Hey, Employer, I've put in a lot of my personal time into this project. So I think it's fair that if you want it that I should be recognized in a concrete tangible way since clearly you want it because it adds more value to the business."

And I think depending on the kind of company you work for, I'd ask for additional equity in the company (since you'd be making the company more valuable) plus additional cash (because you were working on this project night-and-day) and some sort of recognition would all be reasonable asks.

Best case, you both win.

Let me restate this: You had an idea you were so interested in you created it in your off time. You made it open source. Your company likes it so much they want to contribute to the codebase. You, being the leading expert in this software, are the one most likely to be tasked with working on this codebase.

Beyond the obvious "OMG You're going to get paid to work on your pet project!"

the concern being that they seem to want to control it.

Compensation is probably not going to happen. IF it does then you are pretty much guaranteed they will own and control it.

I would advise NOT seeking compensation, and instead saying "omg! I'm so glad you appreciate the work I've put into this open source project. When can I speak to folks about how the current development process of this project and how to submit pull requests?"

Keep redirecting the conversation towards them contributing. If they ultimately say they need to control the codebase just tell them that if they're not ok with contributing to the project they can always fork it. They get the control they want and it's probably not worth suing you and against their best interest to fire you, because you're the leading expert in how it works.

Side note: I'd switch the license to GPL ASAP. Not because I'm a huge GPL fan but because the GPL can be used as a weapon to prevent them from using it without contributing. Or, it is better at that than any other license. It sounds like you're the sole contributor, so that's probably legally sound. I'd also make some quick improvements that they would not want to forgo since it sounds like they already have the current version under the Apache license.

The way things work at this place, I'll probably end up maintaining the product until I leave my job.

The reason for not transferring over is that once I do that, they will essentially not let me create features that I think can be done better using my product, because they exist in some other product.

It sounds like there's a lot of "politics" that you're unaware of or not mentioned. Is the project actually in competition with one of your company's products? If they're an open source company, how do they handle community governance and contributions? Do they normally make contributors sign over copyright, like the FSF?

Why do you think there would be conflict over features?

I agree with others that talking with one or more lawyers should be a high priority.

sounds like you created a competing product and made it open source. that spells trouble. Get a lawyer. IANAL

Currently, if they technically own the code, your open-sourcing it isn’t valid. You can put an Apache license in the repo, but you can’t legally give a license to others to use something you don’t actually own.

So the code is not really open source until someone puts that license on it with company authority. It is just public.

It sounds like this product competes with their other products. Even if they didn’t ask you to turn over control you would have problems working for them during the day, competing with them in the evening. Possibly liability even.

If you want control, and want to use it to do things they don’t want, you probably have to leave the company.

If you are going to leave, it seems you might turn over the repo to them to avoid legal trouble, and then be sure that someone else at the coming makes the open-source status official. Then you or others can fork it. But it seems you should only do further work on the fork if and after leaving.

Again this should not be construed as real legal advice as I am not a lawyer.

And only if the company open sources it.... Cant just be forking over proprietary code.

Mitarbeiterer_findungs_gesetz : "employee invention law". Where Mitarbeiterer can be further broken into "mit arbeit -erer". Mit=with, arbeit=work, and -erer is a suffix also used in English for "person who does a thing".

There's no -erer suffix, the first -er makes Arbeit + er (= work + er). Second one belongs to the word Erfindung (= invention)

Maybe a restrictive license may help: if your company takes the code and modify it, make them under the obligation of releasing the source code too.

What is the current license of your project?

Ultimately, nothing prevents you from deleting your public Git repo. You can decide that your project is not available anymore, it is your right.

> Ultimately, nothing prevents you from deleting your public Git repo. You can decide that your project is not available anymore, it is your right.

I don't think this is an option. They can still claim that they want the code because I created something that directly relates to what the company does.

That's a quick way to have a miserable life (getting fired, sued, blacklisted among peers, etc).

At least you are using the know how you gained during your work

I’ll also second all of the suggestions to talk with a lawyer, not to go on the attack but to verify that whatever agreement you come to actually gives you the rights that you think it does— as you’ve discovered, small clauses in contracts can have big, unexpected effects.

My non-lawyer understanding is that if you live in California and your company is based or the contract states that it is intended to be interpreted by California law then I’ve always operated under the following understanding:

(Not a lawyer but...) I’ve been led to believe you are safe if you work on your own time, with your own resources and it does not directly relate to the employer.

I think someone referred to this once as The California Clause. If that is the right name then I’d say the California clause is not going to protect your ownership on this case. However, maybe you aren’t in California? It is hard to imagine a state in the US that is more employee friendly so I would be surprised if you found your situation better elsewhere. Besides possibly another country? Even then I’d be surprised. Things tend to trend the other direction outside of California.

That being said, many have told you to discuss with a lawyer. And some have even warned that it can cause unnecessary conflict if you do. They aren’t wrong but you can always talk to a lawyer just to see what they think your options are. If this is as much of a slam dunk case in favor of your employer as I assume it is, I like to think a good lawyer would be able to let you know.

On the bright side, if your employer does take it over and they still allow it to be open source, that’s super great! Getting paid to do open source is a blessing. There are also so many benefits to being the creator of a valuable tool in your company. These things can often lead to promotions, bonuses and all kinds of personal fulfillment at work.

If you do learn that you’re going to have to hand it over, find a way to spin it into a good thing. Don’t let it make you bitter. And next time you build something on the side, consider your employment contract and decide if you want to build something that doesn’t relate with your employer so you might have a better shot to align your desire to keep it.

Try not to let this make you bitter. This could be a great thing whichever way it turns out.

Ultimately, as the creator, it's in the best interest of the open source project and society that it remain under your control.

If companies could claim ownership over all their employees' personal open source work done during their private time, there would be no open source projects today.

Yes, that was my point - it is not a certainty (and so any advice beginning "since your project is open source..." might be based on a misconception.)

>...whether the employee worked on it during company time, whether the employee was asked by the employer to work on it and how closely the work aligns with the employer's business.

It actually depends on the terms of OP's contract and whether the relevant clauses (if any) are enforcible in the appropriate jurisdiction. The factors you mention may be a factor in whether this is open source (and we already know, from OP, that it does align with the employer's business), but the "but if..." argument of your second paragraph is unlikely to carry much weight, legally. This is why OP should speak to a lawyer if she is dissatisfied with the employer's proposal.

Most of the responses here concentrate on trying to get some kind of financial return for your work.

That's important, but for you it might not be the most important thing (you were giving it away and working on it in your spare time, right?)

Consider asking to make it your full time job, or something like that. You clearly know the field well, and you've managed to build community. Having the company resources behind you and the responsibility to run the project like you want might be an outcome that interests you.

I wish I knew myself better.

Maintenance and taking the product forward will naturally become part of my job, so that's a given (and I'm happy about it).

What can I ask more for is what I'm trying to figure out and having a hard time.

I'm generally creative with software and products but I'm really bad when it comes to negotiations and figuring out a good barter.

I absolutely don't want to take the legal route and want to work something out mutually.

It doesn't cost them anything, and in the future if you leave it's surprisingly useful if that is a direction you want to go.

I know you are getting a lot of advice saying "get a lawyer". That's up to you.

> I absolutely don't want to take the legal route and want to work something out mutually.

You know, a good lawyer is both good at listening to his client’s goals and good at negotiating. Such a lawyer would avoid a “scorched earth” outcome, if that’s what you want, and also negotiate a better deal than you could on your own. Lawyers who specialize in business transactions are sometimes called transactional lawyers (as opposed to litigators, who specialize in asserting claims in court).

If you are in Canada I can recommend someone who is good, former software engineer and does IP law.

> "Directly relates to what my employer does"

You will face multiple charges. You have no IDEA - how brutal it can be in court. In 99% case - You will fail mostly because - you built your company competitor while working in a company that is more likely to become your future competitor if court grants you your right. This will break 99.999% company of the world. In many of the employee contracts - Some/Most of the Company has a clause that - you won't be working for the next 18 months or any X months in a company or product that is directly their competitor.

My Suggestion as a company, "Be Polite to your BOSS and tell them every truth on why you built", "what provoked you building something like this outside of the company", "How would you like to see yourself in next 10 year".

If your company is really "p* off", Max, they will do is, they will stop some future promotion and would most likely keep you away from most of their work, they will remain alert on your every step and would call a lawyer to inform you a certain thing, for which they don't have to bear the cost of fighting court case at the end, company saving money.

============= THINGS WOULD HAVE BEEN LITTLE DIFFERENT ########

If you would not have built anything related to what your employer does or what your company does.

###########

Imagine you have company and you hired some employee. Now all or some or one of them has build something related to exactly what your company does, how would you handle?

Dont be afraid to be transparent. I would still review your contract and potentially call a lawyer just to see if theres any action whatsoever but it might not be necessary.

Just be open about your wants and needs. Tell them you just want to be able to keep your project since you worked on it in your own time. Hell tell them you are okay exposing your codebase under their org. But get it in writing that you intend to keep rights to all code you write even if done at work. Allowing you to be paid to work on it for customers they nab.

At the end of it its all your choice. Just negotiate terms that make you happy. Do not hold back concerns. Period. But be smart and ensure they have a legal footprint. Make sure to get copies of anything you sign. Dont agree to anything that isnt on paper.

Only a proper lawyer can help you, though you should do initial searches online to see wether you get an inkling of where you stand, and possibly reduce amount of time needed to spend on expensive lawyer. See if there are free legal councel near where you live, online or if anything can be covered by insurance.

"I've developed it on my own time but the product directly relates to what my employer does"

This is a bright huge red flag. Depending on the contract you signed, creating something in direct competition while employed can be grounds for assuming ownership. Using company resources, time, knowledge, clout, internal discussions and/or reputation, can be strong case for this company, against your position. Evidence and witnesses as well as your own words can be used against your position. If this IP was unrelated to company offerings, they would be less interested, and probably objectively strengthen your own case somewhat, depending on what they can prove and not.

If you want to go very cheap, or avoid possible bill-hungry lawyers: Ask your boss wether they've cleared this with their internal lawyers and if you can get this confimed via a signed statement of company claims of ownership and exactly about what they claim ownership of and not. Always go internally through nearest boss or neutral intermediate in writing: Export the communications as well. Avoid contradicting your own claims unwittingly.

If you get this letter and don't want to lawyer-up, I'm afraid your options are limited and you should do whatever necessary to avoid getting fired or sued. If they bluffed, you just called them on it, and can negotiate from there.

Unfortunately, depending on the legal councel at this company and possible value of your work, your standing looks very weak, possibly damaging against you. This is why it's so vital to keep work and personal life divided. What may help in such situations is to do book-keeping of resources and hours spent separately for such side-project and document the process, while making sure Nothing from work is used.

Depending on your employment contract, this could be tricky for you. If your employer is nice about this and they want to encourage you, I would use this opportunity to negotiate something here which creates win-win for both. Clearly, they see a lot of value in this codebase so instead of turning this into a conflict, sell yourself to your employer. You can definitely ask for leadership control over it. Not sure if monetarily, you can get anything but worth a try.

Your employer probably owns the code, but as its primary creator, you still have leverage.

If your employer used standard employment agreements when you signed up with them, the product almost certainly belongs to your employer. This is especially the case if you used any employer-owned equipment to create it (laptops, networks, etc.).

However, your employer probably knows that if they are aggressive, you will become unmotivated and drop any work on it, making it valueless and probably causing you to hate your job and quit. If they really value the product and you, they'll find a way to make the product and your career successful.

You can ask them to give you a stake in its success, and officially bring it into the company. You can also ask them to give it back to you if they stop supporting it. If you consult with a lawyer, they can probably advise you on various frameworks on how to organize such a deal.

Yeah, that makes it complicated. Even the advice to get a lawyer is tricky, as it could telegraph intent and put you even further in a corner.

I suppose a consultation is fine, but I would be very careful about letting them know you retained one.

Pretty aggressive opener. Is that really necessary?

"There's no harm in letting them know they've retained one"

It will, for sure, trigger an internal discussion, and maybe some defensive moves like trolling logs or making a copy of his work PC drive. For example, what do you suppose the chances are that the OP navigated to his GitHub repo from a work PC?

How is advising caution in this situation "nonsense"? I would weigh the consequences of telling them I had a lawyer, and evaluate anything else I should probably do before telling them.

1) You should have had counsel earlier when you signed your agreement. You could have gone through your contract before you signed it, and potentially have gotten revisions. If you didn't get revisions, you could at least correctly understand the boundaries of legal restrictions you're agreeing to.

2) You definitely need counsel now. The situation is going to force you to make a high stakes decision.

Even if you can't change the situation, you can at least learn from it.

I just do corporate politics by first being an employee who does everything within reason to help the work progress. Eventually this builds towards managers acting in my interest. If they fail to do that I start removing myself from such extra activities. If you wrote some great software they can use you should transfer it since they will find ways to reward you for doing such things... unless you know they wont, then you have to be a pain in the ass while reminding them what you've already selflessly done for them.

Just be sure you are a nice guy and ask yourself if they are nice to you. If not, can you condition them to be nice? If not, take the legal route for everything.

I know it's not going to resolve any issues but at least you are forcing them to say why that's not possible now and what long term plans they might have in store.

Ownership might also be the wrong terminology, but I wanted to avoid the word "authorship" because you can never relinquish that right. At least to our national laws... Again not sure how it works in the US

They are obligated to take ownership.

Corporations are as moral or amoral as their leadership wants. Your average small bakery better has some good standing in a community, so it better behaves reasonably.

Their job is to keep existing, hence making some profit. That can be just enough or maximal, again depending on the wishes of the owners.

The long term value of the OSS community relationship might be more valuable than just grabbing the project. The law might explicitly not entitle them to grab it.

They can try to take ownership but are not at all obliged.

In fact the psychopatic behaviour of todays megacorps is unravelling the fabric of the societies that enable their existence.

My 2 cents - don’t.

You want compensation, you want to direct the roadmap. Your employer wants ownership. Where is the conflict?

Why make one?

(P.S. - my legal experience “peaked” about a decade ago when I hired Andrew Valentine, managing partner of DLA Piper Palo Alto to help bridge what should have been an easy win-win. We ended with a whole lot of losers. I got a full refund, though, so yah.)

(Also - Andrew, in case you read this, you never sent me the invoice for the out-of-pocket expenses you paid to UPS documents to San Bruno. I’d be happy to pay those. Contact in profile.)

On some of the key terms in a contract: explain me the situation, give me the options and the associated risks, and then let me make the call on what I (as the client) find acceptable. I've never seen something blow up when operating in this way.

If they pressure you to sign documents then consider that they don't have your best interests at heart. Depending on the company their position could either end up being very friendly, or very unfriendly towards you.

Also remember that, if you feel this is a project with great potential, it might be worth quitting your job over.

The legal position will be different depending on the jurisdiction you are based in. The laws of Belgium are different to those in say, Delaware.