Intellectual property and contract staff

[redfox]

Hi...
I need some guidance. One of my contract staff, currently on furlough due to lack of cash to pay him, kept his work product (volunteer job descriptions) when he left employment. I did not think to ask for this work product. I now need it, and soon.

He contacted me asking about his job, after I posted an online volunteer recruitment blurb, stating that he has the volunteer job descriptions I need. I replied that the position is budgeted to become active at year's end, and to please send me the work product now. I hope he agrees.

I assumed the work product developed while he was with this non-profit belongs to us. Doing a quick web search leads me to question this. Any advice? I certainly cannot afford an attorney! If I could, I'd simply hire this position, instead of taking it on myself. Oy vey.

[rodeosweetheart]

Hi...
I need some guidance. One of my contract staff, currently on furlough due to lack of cash to pay him, kept his work product (volunteer job descriptions) when he left employment. I did not think to ask for this work product. I now need it, and soon.

He contacted me asking about his job, after I posted an online volunteer recruitment blurb, stating that he has the volunteer job descriptions I need. I replied that the position is budgeted to become active at year's end, and to please send me the work product now. I hope he agrees.

I assumed the work product developed while he was with this non-profit belongs to us. Doing a quick web search leads me to question this. Any advice? I certainly cannot afford an attorney! If I could, I'd simply hire this position, instead of taking it on myself. Oy vey.

I am confused as to why your organization would own the contract worker's work product, if the organization did not pay him for his work. Even if it did pay him, if he was a contract worker, then he would own what he developed, no? He was letting you use what he developed for a time.

At least that is how I would interpret it. I used to do contract teaching work, and if I developed a course, I owned the course, unless someone paid me to develop a course. Even then, it could go either way. But if I taught a course for them on a contract basis, I still owned the course that I developed.

[redfox]

We paid him, and it's my understanding that what a contractor develops during a job belongs to the org that pays them. That is my basic inquiry here. I don't have the drive or cash to go to an employment lawyer.

In this case, the work product is volunteer job descriptions specific to our org.

[Miss Cellane]

Did the employee have an actual contract, or are you using the term "contract employee" to describe the type of employee? If there was an actual contract, pull it out and see what it says.

Most, but not all, jobs have the expectation that the work an employee does is owned by the company or organization that the employee works for. So a chemist employed by a large chemical company who comes up with a new product does not get the rewards for inventing the new product, the company does.

[try2bfrugal]

We paid him, and it's my understanding that what a contractor develops during a job belongs to the org that pays them. That is my basic inquiry here.

Curiously, the opposite is often true, unless the contract has terms for turning over ownership.

You can get some free info on the Nolo Press site, plus they have a book on hiring contractors and how to structure the contracts:

Who owns intellectual property created by independent contractors?

When you hire an IC to create a work of authorship such as a computer program, written work, artwork, musical work, photographs, or multimedia work, you need to be concerned about copyright ownership.
The copyright laws contain a major trap for unwary hiring companies. The hiring company will not own the copyright to the IC's work unless it obtains a written assignment of copyright ownership. An assignment is simply a transfer of copyright ownership. You should obtain an assignment before the IC starts work. This assignment should be included in the IC agreement.


http://www.nolo.com/legal-encyclopedia/hiring-independent-contractors-faq-29072-8.html

[catherine]

This is great information. I always thought that if a person is paid by someone to create a product it would be the property of the employer.

[AnneM]

Unless the individual signed a contract with you where you agreed that his work product was a work made for hire, meaning he turned over ownership to you and waived his moral rights, the work product belongs to him.

[Zoebird]

The contract that you have should determine it. And it's a question as to whether you have an "independent contractor" or a temporary worker under contract. And, it also depends upon the field. When a graphic designer does design work, it's considered work-for-hire, and the person buying the graphic design owns all the rights to it. But a photographer who takes your photographs own those images *unless* you specifically write it into the contract that those belong to you and only you. And writers go both ways, depending upon how they work (see above). So some of it has to do with the specific work.

I see no reason why he wouldn't give the information to you -- I don't see it being very important to him per se, and even if he does give it to you, he still may retain copyright, for whatever that would give him (usually nothing). But there it is.

[redfox]

Thanks, all! Very interesting.

[jp1]

Given the nature of this particular property, if the guy is refusing to give it to you as some sort of pseudo hostage situation I'd be leary about hiring him back. At least not without making sure that you have a contract in place that spells out the ownership of future IP.

[try2bfrugal]

He may retain the default copyrights under the contract you had with him, but to not give you any copy at all for your use for work he did under contract seems like a different issue. That would seem like not completing the contract work he was hired to do, which is a different issue than who retains the long term copyright ownership of the job descriptions.

I had a similar issue with helping with a web site from a club volunteer who refused to turn over the domain passwords after he left and had a falling out with the club president. He basically held the club web site hostage. What worked in that case was having someone from the club he was close to and had a hard time saying no to, give him a call and do the persuading. That and I just kept sending emails asking nicely for the passwords until I think the least path of least resistance was having me go away and stop bothering him. The club board threatened legal action at first and that just made him dig in initially.

The next official webmaster had a falling out, too, but at least that time I knew to change the passwords early on and send them to the club president for safe keeping, so we have not had any more web site hostage situations for several years now. :)

[iris lilies]

...
The next official webmaster had a falling out, too, but at least that time I knew to change the passwords early on and send them to the club president for safe keeping, so we have not had any more web site hostage situations for several years now. :)

This kind of thing happens all the time! Our dog club got into tiffs with the club members who were maintaining the web sites over the years, and getting the necessary files was always a problem.

Before the web, our neighborhood had two factions battling it out and the "others" took over the neighborhood newspaper for a while. Well, actually, they only completed one issue. That's all of the resources they could muster, not a surprise, I figured that they would burn out. But meanwhile, while waiting for them to disappear, I snuck out a copyright registration to the Library of Congress for the newspaper. And come to find out, it was already registered to the correct neighborhood organization, so that was a relief.