4 Replies Latest reply on Jul 24, 2012 5:54 AM by GordonShewach

    Ownership of Code

    GordonShewach

      Over the years, I've gained valuable information from TechNet and its predecessors regarding custom databases and ownership issues. I learned that U.S. law grants me ownership of my work by default and unless I specifically sign over ownership to someone else, it remains mine. I also learned that if I sign over ownership of my code to someone else, I can't legally use it again.

       

      So on the occasion when a prospective client speaks with me about a project and this issue comes up, I've relied on these understandings to always decline signing over ownership. Recently, the issue came up again with a prospective client who was committed to reselling the database I would create for them. But I recognized that my understanding on this issue was based on the words of developers repeating what lawyers had told them and perhaps a lawyer could write legal language to allow them to resell the database and allow me to continue to use my code.

       

      So I hired an attorney who specializes in intellectual property law and discussed this with him. First, he said that my understanding of the issue about losing the right to use your code again if you sign over ownership is accurate. More specifically, he said there are many factors that come into play (including the fact that we write our code inside FileMaker), but you have at the very least entered a gray area of whether or not you can reuse your code if you sign away ownership. That's sufficient for me. Being a custom database developer is the job I will retire from. I have zero interest in entering this gray area and gambling with my livelihood.

       

      Second, he wrote legal language that I used in the contract that satisfied the prospective client (and their attorney) to give them the right to resell. And it kept ownership with me so that I could reuse my code however I want.

       

      Before I hired the lawyer and got the legal compromise language, the prospective client tried to twist my arm on ownership by telling me that they had spoken with several other developers who were happy to sign over ownership. I told the prospective client that it was possible that the other developers didn't realize the implications of doing that. Years ago, I fit into that category and benefited from the wisdom shared in these forums. I'm revisiting the issue in hopes that it will help others as it did me.

       

      P.S. For the record, the prospective client insisted on the right to resell despite my lengthy and detailed explanations (with document support) of why reselling the solution is a bad idea and how they're getting out of their wheelhouse to pursue such an option. They sell medical supplies. What do they know about software sales, tech support, upgrades, genericizing the software for others who don't work exactly like them, marketing, demos/downloads, registration, installation routines, legal issues with software, etc.)? The intellectual property lawyer I hired laughed when I told him they wanted to resell. He said that everyone thinks they have a million dollar idea and virtually none of them come to fruition.

       

      Ultimately, ignoring my advice on this was one of about 5 red flags with the prospective client and I declined the project.

       

      Gordon Shewach

      Desktop Services

      Ann Arbor, MI

        • 1. Re: Ownership of Code
          Aileen

          HI Gordon,

           

          You can get around this by LICENSING the solution to the client - exclusively - meaning that you will not sell this product to anyone else.  However, if I were to do this, I would ask my client for a royalty or get a really good price.  I would NOT give the password if client wants guarantee that product will always work.  Once you give password anyone can do something to the engine and if they mess up, somehow they will make you responsible.

           

          If licensing is not good enough, then I don't think any of us can actually sell a product.  The code really belongs to FileMaker.  We are using their tools.  We do not write actual code.

           

          Think about a licensing agreement.  In that agreement you can state that any and all code written for this specific product can be used again as long as it is NOT for a project similar in nature to the product being exclusively licensed.

           

          I think your client is confusing ownership with exclusivitiy of license.  He wants to sell to all others in his industry, if I am understanding you correctly. Ask your client if he means that you can't sell to anyone else in his industry. If that is ok with you, try to convince him to license it from you.

           

          As for your client reselling - he just might hire you for tech support, upgrades, etc. If that is the case, a GOOD monthly support $ contract is in order.  (Uh, telling medical supply people how to set up server, etc, both platforms, or get them to host and save client a lot a headache).

           

          Just my 2 cents.

           

          Aileen

           

           

           

           

          Before I hired the lawyer and got the legal compromise language, the prospective client tried to twist my arm on ownership by telling me that they had spoken with several other developers who were happy to sign over ownership. I told the prospective client that it was possible that the other developers didn't realize the implications of doing that. Years ago, I fit into that category and benefited from the wisdom shared in these forums. I'm revisiting the issue in hopes that it will help others as it did me.

           

          P.S. For the record, the prospective client insisted on the right to resell despite my lengthy and detailed explanations (with document support) of why reselling the solution is a bad idea and how they're getting out of their wheelhouse to pursue such an option. They sell medical supplies. What do they know about software sales, tech support, upgrades, genericizing the software for others who don't work exactly like them, marketing, demos/downloads, registration, installation routines, legal issues with software, etc.)? The intellectual property lawyer I hired laughed when I told him they wanted to resell. He said that everyone thinks they have a million dollar idea and virtually none of them come to fruition.

           

          Ultimately, ignoring my advice on this was one of about 5 red flags with the prospective client and I declined the project.

          • 2. Re: Ownership of Code
            DaveRawcliffe

            Aileen, you stated:

            If licensing is not good enough, then I don't think any of us can actually sell a product.  The code really belongs to FileMaker.  We are using their tools.  We do not write actual code.

             

            If I am not mistaken and it is my understanding:

             

            • FileMaker Inc. is the copyright holder to FileMaker code & tools and it is their intelectual property.
            • As Developer, your "solution" written in FileMaker Pro, Advance, etc., is your intelectual property & if so chosen yours to copyright.

             

            e.g., Using Microsoft Word to write a Novel is not copyrightable by Microsoft.

             

             

            I do hold a copyright for a solution written in FileMaker.

             

            Dave

            • 3. Re: Ownership of Code
              comment

              David Rawcliffe wrote:

               

              e.g., Using Microsoft Word to write a Novel is not copyrightable by Microsoft.

               

              When you have finished writing your novel, there is no Microsoft-owned code in the product delivered to the customer. That's very different from a Filemaker solution.

               

               

              David Rawcliffe wrote:

               

              I do hold a copyright for a solution written in FileMaker.

               

              I don't think anyone has suggested anything to the contrary. However, you are not the only one. I believe Aileen's point was that the model by which Filemaker allows you to sell their code to your client can be adapted to you allowing your client to market your solution.

              • 4. Re: Ownership of Code
                GordonShewach

                According to the intellectual property lawyer:

                 

                • there is code
                • it is owned by the developer
                • if the developer gives away ownership, reuse of that code by the developer may not be legal
                • you can license a database for reselling by a client and maintain ownership so you can reuse the code

                 

                Gordon