Re: Professional Employees and Works for Hire

[croaker]

Several years ago I worked for one of the large credit card companies. Prior to working at this company, while at another employer, I had developed POS terminal code on the side. I continued to develop POS terminal code on the side while employed by said credit card company. The credit card company had me sign a typical employment agreement containing an intellectual property clause as discussed in this message thread. I eventually was assigned to a project to develop a special prototype terminal and to reduce the project time I reused a substantial amount of my previously developed POS terminal code and retained my copyright notice which was displayed when the prototype terminal initialized. Said credit card company put about 5 or 6 prototype terminals at various banks who immediately wanted to know why my copyright notice displayed during initialization. I explained to the credit card company management about the previously developed code. They responded by asking what it would take to remove the copyright notice. Off the top of my head, I immediately replied that they had to purchase a non-exclusive software license from me for X-dollars. About a month later, the credit card company's legal department notified me that there was an apparent conflict of interest. I agreed that that was probably the case (I essentially said "yeah, so what?"). A few weeks after that I received a check from the company for the software license. Go figure. The company eventually went on to get a patent to cover some of the application specific stuff in the prototype terminal devices that I had developed under this project and I didn't balk when they politely (really) asked me to sign a patent assignment agreement because the patent didn't cover any functionality of the previously developed code that I brought to the project. YMMV