8 Replies Latest reply on Jan 9, 2014 11:43 AM by Stephen Huston

    Ownership of Run Time Intellectual Property?

    eqitec

      I've been developing a solution engine for a particular vertical market since the days of FM2. Some four years ago I created a run time derivative from that engine under contract with a client. The contract stated specifically that the deliverable to my client was the run time only.

       

      My client now wants to sell their business including my run time to a buyer. The buyer, supposedly expert in these matters, believes my original client was entitled to the full engine from which the run time was derived. Which means that the buyer of my client's business would be taking ownership of my full solution engine when their purchase of the company has been completed. Of course, I disagree and would only part with the full solution engine over my dead body.

       

      Does anyone have an opinion or precedent to cite which could clarify this matter?

       

      Thanks.

        • 1. Re: Ownership of Run Time Intellectual Property?
          keywords

          I would say the buyer doesn't have a leg to stand on. If you buy a book this does not entitle you to a copy of the author's manuscript as well. If you buy a spanner this doesn't entitle you to the dies in which the spanner was moulded.

           

          Your client's ownership of the runtime does not entitle him/her to anything more than just that—the runtime. It would make sense for the buyer to be also provided with your contact details so that he/she can contact you and negotiate changes or redevelopment, in which case you will enter a new contract.

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          • 2. Re: Ownership of Run Time Intellectual Property?
            lkeyes

            I should think this depends on the contract language, but it sounds like your contract spelled things out pretty clearly; It sounds like you had origianally contracted for the runtime only... why does the buyer think otherwise?

             

            In many cases, the contract language is couched in the form of a "license" to use the software for the client rather than outright ownership. with the ownership remains with the developer.  But I don't think there is anything that guarantees the client has only a license...  absent explicit language which spells it out.  

             

            On the other hand,  there is usually nothing that guarantees the ownership that the buyer is asserting either....absent specific language in the contract.

             

            One other point of ambiguity...if the application was developed in-house, when you were an employee of the business, there may have been a clause in your employee's contract that guarantees the employer the right to your "work product"... so that they would own anything developed by you in the course of your employement (and sometimes, even anything developed by even outside your employement, while you are employed by them). 

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            • 3. Re: Ownership of Run Time Intellectual Property?
              eqitec

              Thanks for the good replies on this topic.

              The deal has now been consummated between my original client and the new owner of the vertical market run-time I developed for that client.

              The new owner is now threatening to take legal action if I don't send them the code from which the run-time was derived. They say they only want to "have a look" at the code beacuse their intention is to re-platform the solution for mobility, probably using Drupal. They say they don't want to re-sell it as is.

              I am standing my ground with added confidence from your replies and other commentary here about intellectual property ownership.

              • 4. Re: Ownership of Run Time Intellectual Property?
                Mike_Mitchell

                "The new owner is now threatening to take legal action..."

                 

                Unless they have a contract that says they own the source code ... let 'em. Hire your own Intellectual Property (IP) attorney to be sure, but unless you signed away your rights to the source code, they don't have a leg to stand on. If they want to replatform it, then they can do it without your help.

                 

                (It gets my dander up when people start a discussion by threatening me ... )  

                 

                Mike

                • 5. Re: Ownership of Run Time Intellectual Property?
                  jormond

                  In addition...what "code" do they want. They can't technically get at the source code, without breaking FMI's license agreement.

                  • 6. Re: Ownership of Run Time Intellectual Property?
                    Stephen Huston

                    Keep in mind that with FileMaker runtimes, part of the license and copyright still belong to FileMaker Inc., which has its own stake in protecting its intellectual property.

                     

                    If this new buyer has stated their desire to reverse-engineer a FileMaker product for remarketing, FM Inc. should be made aware of their intent. FMI might even be able to provide some additional info or ideas.

                    • 7. Re: Ownership of Run Time Intellectual Property?
                      jormond

                      ...or sell them the DDR report. LOL

                      • 8. Re: Ownership of Run Time Intellectual Property?
                        Stephen Huston

                        I recall meeting someone at a MacWorld Expo some years back -- pre-12 days (I think fp7 was then current file format, but it could have even been older) -- who had a plugin/file system that would take a DDR report (presumably XML format) and attempt to rebuild a file system from that.

                         

                        That would effectively make the DDR a form of source code!?!?

                         

                        Of course, a DDR still lacks the internal FM Runtime engine coding which makes the files work as they should, and that part of FM source code is owned by FMI, not a runtime developer.