Ask HN: Using a side project at my day job
I've been working on a side project for a while. My current main job is looking to add this ability into their application, and it seems obvious that we could use some the work that I've already done. It's not anything that's specifically tied to what our company does, it's more of a general-purpose tool that anyone with an app could benefit from.
I'm not interested in charging anyone for anything, but I would like to retain the IP rights to my software. My employment contract is relatively lenient in this regard - anything done on my own time, with my own equipment, unrelated to our business I still have rights to.
Some questions I have:
1. What do I need to watch out for from an IP perspective? If using this means that I spend some work time working on it, would getting something in writing acknowledging that this is my IP be enough?
2. Has anyone done anything like this in the past? How was it receieved by your employer? I don't want to give the impression that I'm planning on quitting and pursuing this anytime soon, and being labeled as a flight risk, but on the other hand I don't want to throw away the rights to something I've spent a lot of time on.
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``` I'm not a lawyer and the advice listed below is just my common sense, I would advise you to consult with a lawyer regarding your question.
``` In your case I would just license it - you can either put it under any of the open source license out there or use a commercial license generator - http://www.binpress.com/license/generator ↗ (I'm one of the founder at Binpress).
By the way you mention having an employment that is relatively lenient which is good.
As an employer I would still advise you to either include an appendix or send an email to your legal department listing your side projects, open source projects you contribute to and/or anything else you think should be included there. It is probably being over cautious on your side but remember than employment is like a marriage; everything is fine and nice when they get you to sign on that contract but you never know what will happen when you leave your job to seek your next opportunity.
Additionally if you are in the US, you probably signed on some sort of PIIA (ROPRIETARY INFORMATION AND INVENTIONS AGREEMENT) which will assign anything that you've developed or invented back to the company, some will make it lax and some will be stricter, I would guess most employers will be stricter in order to avoid any potential IP problem in the future.
However if you are in California, know your rights. There's the California Labor Code Section 2870 which states the following:
``` (a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either: (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or (2) Result from any work performed by the employee for his employer. (b) To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision ```
One thing to consider: if the capabilities of your side project would be useful to $dayjob, a sufficiently aggressive company lawyer would be likely to argue that that makes it "related to our business". (And most of the lawyers I've met would be at least that aggressive, if the company was their client.) If you wind up using that code on the job, the case becomes even more clear cut.
So, if you want to keep releasing this code on the side, having something from them explicitly disclaiming (i.e., renouncing) exclusive rights would be very good to have. You've gotten some suggestions about things to look at. There are also open-source projects whose contributor paperwork includes standard employer disclaimers. As to which of these (if any) best fits your situation, you'd probably be best consulting a lawyer of your own.
You need to take your employment contract to a lawyer and get legal advice before doing anything. Depending on the contract, you may or may not have rights to what you developed in your side project, especially if you are a salaried employee. In my case, my employer owns all IP I develop while in their employment. Happily, my employer has no commercial interest in the code I develop to automate my data analysis and management permits me to distribute it under an Open Source license. They understand the value both they and I receive from a collaborative community of analysts. By the way, each year I must sign a statement that I have no conflicts of interest and if I suspect I might have one, I must disclose it to management.
I was in a similar situation at a previous company - they knew of my side project, and wanted to use some of the concepts of it in the work I was doing. As karterk mentioned, it really came down to trust - I explained that I would not be signing over rights to my software and that I would continue selling it on the side, without the modifications being made to it for them. They were fine with this and it never became an issue. I don't think a simple handshake would be sufficient in most cases, but I was trusting enough of my manager (I was there for over 4 years) and went that route. If you are truly concerned about the IP, then you should get both your manager, but also legal to approve it in writing.
I'd worry that your side project is indeed free of work IP. If you have been working on something that ties directly into your work project, but on your own time, your workplace has a pretty strong claim to at least make you not distribute it.
But if it is indeed completely stand alone, and you would be comfortable publishing it open source regardless, do that, then convince the team to use your project. This happened at a previous job with no problems.