Source code ownership

[karol.wozniak]

Hello,

I am assuming this is the right forum for this non-technical question. If not, my apologies.

When I author an Add-in at place of work, who is an owner (Copyright holder) of the source code and under what circumstances?

Also, what is the difference between writing the code as an employee and as a contractor? Please, assume in both cases, that the contract was not originally drawn for software development, but for Architectural work and the Add-ins/Macros were just a side effect of said contract.

Regards,

Karol

[karol.wozniak]

May I add a general disclaimer for the potential contributors to the answers:

The questions posed in this thread were not intended for the purpose of obtaining a legal advise from the answers and all answers should be considered in INAL fashion.

The general purpose was to establish the context, in which the code can or cannot be reused by either the original author or his/her employer for commercial purpose outside of original arrangement (e.g. When employee changes work, can the code still be used by both parties, e.g.: -By said employee at new place of work? -Could the company release a commercial Add-in based on this code? -Could the ex-employee be held liable for the software left behind?, etc.).

To add some credibility to this question: I have noticed that some popular Revit API blogs do use MIT license to resolve the above concerns in relation to the code they are sharing with the community. Would it be a good practice to include an employment contract clause, that specifies that all produced software related to the period of employment and produced at the place of work is to be released under MIT license, effectively saying that both parties can 'use the code freely and as they wish, but at their own risk'? (But even in such circumstances - who is the Copyright holder that has the power to release it under such terms?)

Any contribution will be much appreciated.

Thanks

[jeremytammik]

All I know about copyright boils down to the licensing issue, and all I know about that is published by The Building Coder here:

• The Building Coder samples on GitHub and the importance of a license, any old license -- https://thebuildingcoder.typepad.com/blog/2013/10/the-building-coder-samples-on-github.html#2
• More on licenses -- https://thebuildingcoder.typepad.com/blog/2013/10/wall-compound-layer-and-other-geometry.html#2
• Open Source Code Licenses, Again -- http://thebuildingcoder.typepad.com/blog/2017/09/vacation-and-open-source-code-licenses-again.html

Regarding ownership, I personally believe that all code you write as an employee and certainly during your paid hours is the property of your employer. If you wish to publish it, the employer must agree with the license you equip it with, if any. 

[karol.wozniak]

Hi Jeremy,

Thank you for your insight. I agree with your opinion. It seems the main conclusion would be that we cannot re-use the code, when changing an employer unless granted a permission (license?).

I wonder what happens when we have to re-write an Add-in with the same/similar functionalities as the Add-in at previous workplace. Would you say our insight into previous work could potentially count as an infringement of a Copyright? (or would be in case of a presence of an NDA, which would rarely be present in these scenarios)

In case of work for contract, I don't think the situation is as clear-cut. For instance, from https://asp-software.org/www/misv_resources/business-articles/who-owns-the-code/ 

Courts and legal analysts use a three-part test to determine whether the developer or the client owns a particular segment or module of code. First, the work must have been specially ordered or commissioned. Second, the work must specifically fall within one of the ten categories enumerated in part (b) of the "work-made-for-hire" rule. If the work at issue does not fall within one of the enumerated categories, it cannot ever be a "work-made-for-hire." Almost all software code is consumer-facing code and will fall under category three, audio-visual work, although some software without a human-readable interface may not fall under any of the ten enumerated categories. Third, and most significant, a commissioned and copyrightable work will only be considered "work-made-for-hire" owned by the client if the parties have a written agreement signed by the developer that explicitly states that the work is "work-made-for-hire."

The highlighted parts leave the employers (or rather Clients) in a bit of a vulnerable position in my opinion. Especially, when the contractor/consultant was hired for architectural duties, rather than software development.

In such cases I would liken said software to a scaffolding that the roofing contractor erects to change the roof. The scaffolding doesn't by default belong to the homeowner. (I do realise this analogy may be flawed)

Also, regarding your last point, there also seem to be some leeway, as per this source https://www.mcgregorlegal.eu/947-2/ 

Generally, to prove his ownership the employer has to establish that the software has been written by his employee, whose employment characteristic include duties of development of software, and that there is not an agreement that the copyright remains with the employee. It is possible, however, that the employee has made its own software after work or at weekends and that the employer pretends ownership in it, because the person is his employee and has used company’s equipment. In this case it would be decisive whether the employer has ordered the creation and delivery of this type of software to his employee – if not, then the copyright could be with the developer, although he has been in employment relationship at that time. In the opposite scenario, even if the employee has written the software outside his working hours and at his own equipment, in case that his employment duties include the development of similar programs, then the copyright will probably vest in the employer. It is, therefore, advisable to define clearly the duties of the employee and to provide expressly in his employment contract clauses governing the copyright in the results from his work.

So it seems even employer-employee relationship does not guarantee the code ownership to either party and could be considered on case-by-case basis.

In my case, I do most of my coding either during my lunch hour or after work, as I am, in most cases, not being given time for software development by the company I do the work for (there were few exceptions, when software development work was explicitly requested, once I demonstrated what could be achieved with a bit of C#). Seeing as I am a contractor as well, you can see why the whole topic sparked my interest.

I think this whole Copyright thing is an important issue to be aware of, when entering a contract, which I do not believe many people realise. (Sadly, me included.)

Regards,

Karol

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[jeremytammik · Accepted solution]

I think the easiest solution is this:

• Get your employer to agree to make the code public.
• Equip it with an open source license.
• Reuse it as you like forever.

Should be easy, seeing as the situation often includes starting from almost zero, knowing nothing, and learning from existing open source code.

[karol.wozniak]

"Should be easy, seeing as the situation often includes starting from almost zero, knowing nothing, and learning from existing open source code."

That is exactly spot on.

"I think the easiest solution is this:

• Get your employer to agree to make the code public.
• Equip it with an open source license.
• Reuse it as you like forever."

I am in a process of arranging the code to become OSS, the choices for license being between MIT and ZLIB (had also a glance at Apache 2.0).

I just wanted a bit more clarity, who really is the Copyright holder, and by extension the one granting the license.

Jeremy, thanks again for the input.