Overly general employment contract terms - MD

[joethebob]

I apologize in advance for the length of this question.


The crux of my problem lies in what I would say is an overly ambiguous employment contract.

Background:
In the course of employment I created a software tool as I deemed the ones currently in use by the company woefully inadequate. Its function is to allow quick and easy access to data available by far less convientant means on another website. After a few successful tests I allowed other employees to use this tool as a matter of generosity. The tool was developed entirely by myself, on my own time, using my own equipment/tools, is being hosted on my personal server, and is the sole copy of this tool which has never touched company equipment. The company has not contributed so much as a penny to its development and has provided to relevant training to produce such a work. My position does not involve coding or program design of any kind and is not referenced implicitly or explicitly in my current job description.

I have recently decided to terminate my employment with the company and they insist they are the owners of said tool with the justification stemming from this paragraph in my employment contract:

Return of Documents and Property.
Employee hereby acknowledges and agrees that the
Corporation shall in all events be considered to be the owner of all equipment, files, documents, information
and company vehicle, relating to the business of the Corporation or its customers and accounts, irrespective
of Employee having produced any such files, documents or information. Upon a termination of Employee’s
employment for any reason, Employee or Employee’s estate, as the case may be, shall, at the request of the
Corporation deliver forthwith to the Corporation all files, memoranda, notes, design notes, schematics,
records, reports, materials and other documents, as well as all computer data and files (including all copies
thereof) relating to (i) any and all matters on which Employee worked while employed by the Corporation, or
(ii) the business or accounts of the Corporation, which are then in the possession or control of Employee or
Employee’s estate. Notwithstanding the foregoing, upon a termination of Employee’s employment, Employee
shall be entitled to take with him any printed materials that are in the public domain, provided that the
Corporation shall have the right to inspect and/or duplicate all such materials prior to their leaving the
Corporation’s premises.

So my question (at last) is: What is the likelyhood that contract statement is enforceable to the degree of granting the company ownership?

Thx for your time and indulgence.

[grasmicc]

This is a pretty difficult question. It's not as clear as you are making it out to be. That being said, if they are so interested in owning the tool, you might offer to sell it to them. Just let them know that you aren't handing it over without a legal battle or some compensation, and its up to them which route to go.

[cbg]

I would also recommend that you consult with an attorney who is experienced in the Intellectual Property field.

[CurtJ.]

tough nut to crack

that's a tough one. First, is this a bona fide contract or rather a handbook? Meaning that if it is not a bona fide contract, but rather a handbook, then it may be guidelines, not binding. If a contract, make sure it has the hallmarks of a contract - like mutual consideration and meeting of the minds. If it purports to be a contract, but doesn't pass the litmus test, then they may have trouble enforcing same. Finally, if it is a contract full and through, you still might be able to get around it, but that's more for you and attorney to discuss since it will get down into too many details and such for this board.

also, poke around the web on copyrights and trademark in the workplace. there is some good info out there on who owns a copyright to certain creative material when an employee creates it while on the job. a lot depends on what was created, whether it was for a specific project, whether the employee was ordered to create it, whether it is in the employee's balliwick, etc. It has been too long since I've looked at any of it to give much help, but I know its out there and know the employer doesn't automatically get rights to anything an employee makes. Of course, copyright might not be the appropriate term for your situation, but it might be guiding.

finally, I agree that you should offer to sell it to them if it is company specific. meaning, if its pretty much only good at that job, then just sell it and end the issue. you might get something, they might get something, and the issue is closed. Finality can be a great thing.

oh, and if this is worth something beyond a few bucks, see an attorney - or see one anyway if you feel it is a principled matter.

curt j.

[joethebob]

I've already done some case history research on the subject and found I have a good (meaning at least 50/50) chance of maintaining ownership. The quirk I can't answer for is that clause in the existing contract which could preclude any other rulings.

As far as selling, I would have no problem with it. However for the time being at least they are being hard nosed about it. Unless they soften that stance I have no choice but to stand on principle.

Thx for the comments.

JTB

[Lady K]

Joe,

This is actually a situation that comes up a lot...as many high-tech workers have scripting and programing skills, even thought their core work is not development.

If your employer is being as hard-nosed as you say...your best resource may be to set up an initial conversation with a software IP atty, as you may find not only help with the law, but solutions that are common to your very scenario.

Best of luck.