Intellectual property, part II

In My Humble Opinion
1

I had a previous thread here but something has happened and I have another question. It’s a legal question, you’re not my lawyer etc, but it’s Friday evening and I thought I’d try the dope for opinions before I have to lawyer up, if it comes to that.

To sum up my previous thread…

I work at a small company with no intellectual property agreement doing a job that really had no potential for me coming up with anything that would fall under IP. Yet, I did come up with some computer files that could be used with a machine to make “widgets.” I spent many hours at home off the clock creating computer files to make my widgets just because I enjoyed doing it, then I used the files to make widgets at work and save the company from having to buy widgets. It wasn’t my job, I just offered to do it.

In August, the owner announced that he was selling the company to a corporation. At that point, I probably had 50 computer files related to my widgets. I decided I wanted to start my own business using those files but wasn’t sure I had the right, and that’s when I started the other thread. I finally just asked the owner to sign the files over to me, which he did. End of that thread.

So, I’m finally quitting my job. I put in my notice last week and my last day is next Tuesday. Our general manager is not a corporate guy, he’s been working there for like 20 years. He came to me today and asked where those files were. I told them that the previous owner gave them to me. He said the corporate people consider them intellectual property and part of the purchase so it’s a legal matter and I need to bring them and put them on the company computer before I leave the job. I again told him the previous owner gave them to me before the purchase. He said “I spoke to the previous owner and he thought he was just allowing you to have a copy of the files, not take them for keeps, and it’s going to be a huge pain for everybody if you don’t bring them in.”

Well, someone is lying. The previous owner very clearly gave me the files for keeps (see post #13 for some completely non-admissible evidence). I have no idea if the paper he signed is worth anything but it says “I, the owner, recognizing that Fubaya spent many hours working on these files on his own time, hereby transfer ownership of all .XYZ files to him.”

Could it be that he didn’t have the authority to give me those files and has just realized it and is backing off the whole “you can have them for keepsies” thing?

I guess the question is that, would he have the authority to give me those files just days before the corporation purchased the company? On one hand, he did sign over the files before they closed on the deal and the files would not be mentioned anywhere in the sale contract. On the other hand, I’m sure the contract said “…and all the company’s intellectual property…” which would arguably cover the files, although with no IP contract and me working on them at home might make that questionable.

I took the files on good faith, although ignorance of IP law is no defense, and I have done an enormous amount of work in preparation of starting my own business. I now have 300 files and they’re all mixed together, I could only guess which are the original 50, or if there were 50 or 100 or 20. I don’t know. I’ve also done a large amount of editing and added a lot of data to all the files so the original 50 really don’t exist anymore. No one has ever seen the files except me, no one knows how many there were or even what they contained, and I only have a general idea, so I really don’t know what to do.

Any opinions?

2

I’m far from being a lawyer.

What would you like to happen?

  • Do you want to allow the company to use the files to make more widgets and pay you a little bit per use | per month | per widget ? Could they do this in perpetuity? Could they alter the files?

  • Do you intend to take the files to another company so they can make widgets?
    How screwed is the company without your files? Is their widget production stopped? Can they generate the files anew or reverse-engineer them? Would you allow that or consider it theft of your IP?

3

You need to get a lawyer.

4

Yes, you needed to get one as soon as you starting thinking that these things were yours and not your company’s.

Do you have an employment contract? If so, does it have any language that might apply to work product or intellectual property?

The fact that you made these things in response to a problem at work (having to buy widgets) and that the company has been using them to avoid having to buy widgets makes it look like something associated with your job.

But clearly the company itself considers its possession of the widget-makers to be an important part of the value of the company.

The real question now is what are you prepared to do to fight this? For you to get any real answers—even to answer the question of whether you have something to fight for—you really have to have your own lawyer. Are you prepared to do that?

5

I forgot to mention something that might be important. The general manager said I could keep a copy of the files. He said the previous owner had said he thought he was only letting me keep a copy, not have the files to keep. That’s not true, the previous owner specifically said (verbally) that the files were mine and, at my request to make sure it was clear, signed a paper saying he “transferred ownership” to me. But, if they considered the files to be their IP, why allow me to have a copy? Could they be bluffing?

This is, of course, the best advice. I will talk to one monday. I’m sure no one wants to read these long posts anyway, but it feels good to talk about it instead of sitting around chewing my nails all weekend.

I’d do that, but they’re not offering. They claim the files are theirs.

I should clarify… I have never spoken to them about the files. The general manager just came to me and said “the corporate people say the files are IP and are part of the purchase, so it’s a legal thing and it’s a big headache if you don’t bring the files in, so just bring them in.” I don’t know if they’re willing to take this to the Supreme Court, I just know that the corporate people are total assholes that don’t seem adverse to fucking their employees over on a personal level. I’ve seen it and don’t like their eyes being on me.

I intend to start my own business making widgets in bulk and selling them to widget suppliers. Once the previous owner signed the files over to me, I purchased a couple thousand dollars worth of equipment and have talked to a couple suppliers. So far, no luck, but I’m waiting for other factors in the market to line up soon, then I think I’ll have better luck.

Widget production would stop but they aren’t the least bit screwed. There are thousands of companies like ours that simply purchase widgets through suppliers. I don’t want to say exactly what I do, but imagine I’m a carpenter and figured out how to make nails so we don’t have to buy them anymore. In my business, we buy wholesale and charge the customer for materials at a markup, so if we use $20 in nails, we charge them $30. If I make them for $10 using my files, we still charge $30.

But we aren’t a nail manufacturer, we’re carpenters and that’s how we make a living. My files and widgets are incidental to the business. Without my files, they would just do like every other carpenter and buy them wholesale, use them and charge the client retail. I estimate that it would only save them $5000 per year. However, they’re a big corporation and could start making them and selling to suppliers and make millions. But, dammit, that’s what I’m trying to do.

They are welcome to. From what I can tell, I am the only person on earth using my method and equipment to make widgets. There are manufacturers that make them (they aren’t patented or protected in any way), but my method is simpler and cheaper. They couldn’t really reverse engineer them but they can figure out a way to make them, they can even use my method, but they don’t know my method to make the files. They want the finished files which are more or less like CAD files. I have sort of become the world’s expert on widgets, but they don’t need to know anything if they have the files.

I didn’t think they were mine until the previous owner signed them over to me. Again, the paper he signed says “I hereby transfer ownership of these files to Fubaya.” I thought that was good enough, but now I don’t know if it’s worth anything or if he had the authority to sign something like that right before he sold the company.

I had no contract or IP agreement under the previous owner. The new corporation has one which I didn’t sign because I wanted to discuss it with them first, but they never discussed it with me. I have literally never spoken to a single corporate employee about the files, or anything else for that matter. I have made about 4 new files since the corporation took over and I have always intend to let them have those files.

True, I agree that it’s work related. What originally made me hopeful that I could keep the files is that the company never asked me to do it. I did it at home and came to work and said “watch this, I can make widgets for us if you want” and the owner said “that’s cool, go ahead and make them if you want to.” I was never asked to do it, it was my idea and 100% my project with all work on the files being done on my own time except when I came in and used the files to make widgets. I know that doesn’t really matter, but later, he signed the files over to me because I had done all the work in my free time.

I don’t think they really consider them important. This corporation runs on spreadsheets, and I think someone hopes that they can shave a little bit of cost off their spreadsheet. I don’t want to get into it, but the company is overly fanatical about spreadsheets. I imagine they have a spreadsheet on how much toilet paper each of their branches uses, and the only motivation anyone has is to make themselves look good by sending a spreadsheet to the corporate HQ and saying “Lookie, our toilet paper use is 4% lower than the other branch because I fired 8 people!”

6

I… well, I made it through my last day of work without being sued, so that’s something, right?

I finally got to meet with an attorney this morning (one of the best IP attorneys in the state, no less), and he said I had “a very good case.” The previous owner signed the files over while he was still owner, plus, although it was work related, I was not paid to create the files and did it off the clock so that would make it doubly difficult for someone to try to sue me to begin with.

I wasn’t sure the paper I typed up for the previous owner to sign was worth anything, but it turned out to be perfectly worded. “I, the owner, recognizing that Fubaya spent many hours working on these files on his own time, hereby transfer ownership of all .XYZ files to him.” Even if the files weren’t the owner’s to transfer, it established that I had indeed worked on them on my own free time and really complicate anyone trying to claim them.

The attorney advised that I just not bring any of this up and see if they ask about the files rather than shoving it in their face and screaming “Molon Labe, bitches!” which was totally what I wanted to do. My manager did ask toward the end of the day and I told him everything was on the computer except what I made at home.

So, legally, I’m probably ok. Whether corporate will look at the computer and believe it is the question. I might still have to show them the paper or even go to court if they feel frisky.

On a side note, the attorney was really impressed with my business plan as well, and I think I’ll sit down with him soon and see if I need any copyright/patent protection. I don’t think I actually will, but it will be good to have an expert look at all the angles.