Legality of selling software

[smercurio_fc]

I did a little bit of searching on this subject but could not find something that was specific to my situation so I wanted to ask the folks here for some advice. A long time ago I developed a toolkit to perform advanced error handling in LabVIEW. Over the years I've improvoved and expanded its capabilities and off and on I have considered whether this is something I can sell on my own. The problem I have is with the legality of doing so because I developed this toolkit using the LabVIEW license that my employers had and for a large percentage their resources (i.e., the computer I had at work).

This is a toolkit that I've carried with me over the years and over my past four employers since it's been extremely useful in all the project I've done since I initially created back when LabVIEW 3 came out. I know that if I owned my own copy of LabVIEW and had developed this on my own then I would be less worried about the legality of this, but I wonder if I have any standing in terms of intellectual property. I know that as an employee of a company anything you do while working there is pretty much owned by them. But what about something that's not specific to a project, and is intended as a general toolkit to improve a programming language? I'm not sure about this.

Clearly, a lawyer would be the best person to talk to, but what kind? Any suggestions and advice is welcome.

[Conseils]

A small but possibly important point......

Don't assume that every one here is in your country of residence, which could have a big influence on the legal position.

That being said I had the privilege of working for a large international company (American) with a very strong emphasis on ethics. For example every employee was required to attend a one day ethics course.

So based on my experience (as well as the course and manual); I would advise anyone in a similar situation the following:-

You indicate that you did the work on their computer in their time, for me at least it's clear. They own all of it 100%, unless your contract of employment specifically detailed otherwise.

I also was heavily involved in managing IT for a while, our company usage policy clearly indicated "if you did it on our hardware (regardless of whose time it was), it belonged to the company". There were many get out mechanisms if you knew the legal loop holes... for example (but don't use my reference as a defence if you get busted). "It is necessary for the user’s computer to display a copyright notice and policy information at the commencement of each session, which must include a confirmation mechanism indicating agreement with the detailed conditions" (there is lots more to this). If you didn't know, you can / should customise the Windows logon screen to include messages for exactly this purpose!

Now another company I worked for, the accountant tried to get smart and produced his own (based on a legal document) intellectual property ownership agreement. Whilst it was legally correct it was un-enforceable as the legal technical language constituted a contract which could not be understood by the party signing agreement (me, I had this checked out because it was my job for the company). Again this would only apply in the specific country concerned (not America).

Finally the company I worked for always stated, if you feel in any way uncomfortable - you probably shouldn't be doing it..... ask H.R. for guidance.

If I were you and you feel it's worth it, clean room engineer it! On your own hardware in your own time.

I hope this helps and of course, this is only my opinion based on my experience.

[Enrique]

If you made the toolkit during your work time, using work resources, then the company you work for are the owners of the rights. You must ask your company if they will give you the license and under which conditions.

An alternate route is to get your own copy of LabVIEW and build the tookit from scratch. (You need to get LabVIEW yourself anyway if you want to be able to provide support. Otherwise, you need to go back to work to get a hold of LabVIEW.) There may be a problem is if the finished product ends up very similar to the one your company owns, which in that case they may argue that it is a derivative work.

Good luck!

Enrique

[smercurio_fc]

Thanks for the initial responses. I live in the US, so everything here is owned and run by companies. As I indicated in my original email, and as pointed out by Conseil and Enrique, I know that anything that's developed while working as a full-time employee of a company is owned by them. Of course, in my case, I'm talking about multiple companies since the toolkit was developed over time at several employers. Still, I agree with Conseil's statement that the company would own it 100% (especially here in the US). As for the ethical part it, I am trying to be ethical about this, as I don't want to do something that's not ethical and/or legal (not always the same). That's why I'm asking first before doing. This would be the same if I did not want to pursue selling this but rather distributing it for free. In either case there's legal issues.

The thing I wasn't sure about was what if I developed a new version on my own time and using my own copy of LabVIEW. As Enrique pointed out this may be considered derivative work. There will undoubtedly be strong similarities and some things that would be done the same way given the inherent nature of what's being accomplished. Has anyone out there been faced with something similar with anything they've done?

[Enrique]

An observation. Not with the intention of been scary, but you may already broke the law. You said that this toolkit has been developed under several employers... how was that? Did you worked for one employer, resigned, start working for another employer and brought the code with you to the new company?

[smercurio_fc]

Don't worry, as it's not something that I haven't already considered...

To answer your question, in my case I was laid off each time, though I don't think that matters as far as the fundamentals of your question are concerned. Have I already broken the law? Probably. But if I have then so have millions of other engineers who change jobs. I don't make that statement as an excuse, merely as a statement of fact. When you change jobs you're bound to bring with you things you've learned from your previous jobs. If you designed something while there you may end up using it again. I've seen it all the time - engineers who reuse a circuit they designed to accomplish a task while at their previous job, or software programmers who reuse libraries they developed at a previous job. Is that illegal? If so, lots of people are going to need to be prosecuted...

After all, I would think that at some point practicality has to win over the "letter of the law". I'm not saying that means I can do whatever I want - far from it. In fact, I'm trying to prevent potentially making the situation "worse" if I were, for example, to consider the alternative solution of developing this on my own given the history behind the software. I have considered this, and wanted to know if others had any experience in why this is or is not a practical/legal solution.

[falkpl]

Your employer probably has the rites to your toolkit.  I believe that when I signed the contract paperwork for my employer I signed over all my intellectual property rights in a document for them.  This does not mean that they will have an interest in your inventions and can waive their rights.  When Steve Wozniak was working at HP he developed a simple computer (the Apple I prototype) and offered it to the management since he was legally obliged to do so, HP balked at a $800 personal computer (like there is a market for personal computers) letting Woz do with his invention as he pleases  We all know what happened after that.  Most likely your former employer will not have any desire to sell your toolkit since the support is really what you will be supplying and the software will be yours.  You will have to ask a lawyer for all the details but I would guess both ethically and legally you have to offer it to the employer first.  If they dont want it they can sign it over to you.  I have always hesitated developing tool knts for resale because of the support issue (If I pay for a toolkit it better work and someone better answer my questions promptly when I cant get it working).

[Conseils]

What you say may be true, as you pointed out there can be differences between ethics and legal requirements.

The important point is: -
  You can use knowledge that you have gained and expertise that you have developed.

What you can not do is: -
  Take existing material and re-introduce that material into another company if that material is considered as owned by the 'first party'.


Thus for example you may: -
  Having learnt how to program in LabVIEW use that knowledge in another company.

You may not: -
  Take existing files / materials or intellectually protected material from another company and introduce it into another company.


Thus you have to be careful not to infringe copyright or patents having seen a particular solution to a problem. What you can often do is engineer a way around that protection using your knowledge and expertise gained in designing the original solution though watch out for gagging clauses, so be careful here!

[Conseils]

Furhter to your point about using someone elses routines I would point out possibly the most famous case of all in this area, that of SCO versus Linux

"

Linux copyright row escalates

The biggest distributor of the Linux computer system has waded into a row over claims that its creators have broken copyright by suing the company making the accusations.

Red Hat, which sells a widely-used version of the open-source operating system, has started a fighting fund with a $1m donation intended to cover the costs of anyone choosing to hit back at SCO, the company which claims it owns part of Linux.

SCO has been threatening to sue Linux users large and small, saying that code it owns - bought from computer software house Novell - has been illegally recycled into Linux by some of the thousands of programmers who built the free-to-copy system.

"
http://news.bbc.co.uk/1/hi/business/3124679.stm

[jspaarg]

Are you still employed at a company using these tools?

That answer affects your approach.

If you are going into business for yourself...

Establish a fictitious business name (FBN, DBA, whatever).  Cost depends on your city/couty/state but probably less than $50 plus a newspaper ad

Obtain an EIN, cost Free.

If possible, get a credit card with your DBA, Free

Establish a bank account.

Buy your own copy of LabView for home use.

Review any employment / consulting contracts that may affect your rights.

Carrying actual files from employer to employer could make it more difficult.

If you are still employed at a company using your LabView tools, get a release or a license contract.

If you signed a non-compete clause, make sure that LabView apps are not a product that the company sells.

Your primary concern needs to be your present employer.

Technically you should get agreements from each company, although sometimes opening the past is detrimental.

If someone at one of the prior companies "has it out for you", you may be stuck.

I don't know the quantity of work that you have done, but starting from scracth (and noting in a logbook when you do so) is probably your best option.

Not a lawyer, just someone who has done a lot of software over the years.