Legal advice needed URGENTLY!

[chris7771]

Hello!

I need help in understanding if the following passage from a Contract means that any of my own intellectual proprietary ideas and developments will be considered the property y of the Company – because I develop it at the time of my work there?

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5. Ownership of Intellectual Property and Work Product

a) The Consultant acknowledges and agrees that all materials, including but not limited to any and all written material, graphs, diagrams, drawings, software, software packages, data, correspondence and other documents, artwork, photographic images, video or audio materials and/or recordings, in digital form or magnetically or optically encoded materials prepared by the Consultant in relation to the Company operations and/or in the delivery of the Services in all forms of media or data whatsoever whether now known or hereafter devised (the “Work Product(s)”), shall be the sole and exclusive property of The Company. The Consultant hereby grants to the Company throughout the world and in perpetuity, all right, title and interest that the Consultant has or will have in the future, including but not limited to copyright, in and to intellectual property developed by the Consultant hereunder and the Consultant hereby waives any and all moral rights Consultant has or will have in such intellectual Property.
b) For the certainty of the Parties, the Consultant acknowledges and agrees that the Company shall own exclusively and in perpetuity throughout the world, all right, title and interest existing now or in the future of every kind and character in and to the intellectual property developed pursuant to this Agreement. All such rights shall vest in the Company immediately upon the creation of the intellectual property and the provision of the Services by the Consultant and shall remain vested in the Company in perpetuity whether this Agreement expires in its normal course or is terminated by either party as provided for herein.

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Any help is SUPREMELY appreciated!

 

[ducati998]

Hello!

I need help in understanding if the following passage from a Contract means that any of my own intellectual proprietary ideas and developments will be considered the property y of the Company – because I develop it at the time of my work there?

@@@@@@@@@@@@@@@@@
5. Ownership of Intellectual Property and Work Product

a) The Consultant acknowledges and agrees that all materials, including but not limited to any and all written material, graphs, diagrams, drawings, software, software packages, data, correspondence and other documents, artwork, photographic images, video or audio materials and/or recordings, in digital form or magnetically or optically encoded materials prepared by the Consultant in relation to the Company operations and/or in the delivery of the Services in all forms of media or data whatsoever whether now known or hereafter devised (the “Work Product(s)”), shall be the sole and exclusive property of The Company. The Consultant hereby grants to the Company throughout the world and in perpetuity, all right, title and interest that the Consultant has or will have in the future, including but not limited to copyright, in and to intellectual property developed by the Consultant hereunder and the Consultant hereby waives any and all moral rights Consultant has or will have in such intellectual Property.
b) For the certainty of the Parties, the Consultant acknowledges and agrees that the Company shall own exclusively and in perpetuity throughout the world, all right, title and interest existing now or in the future of every kind and character in and to the intellectual property developed pursuant to this Agreement. All such rights shall vest in the Company immediately upon the creation of the intellectual property and the provision of the Services by the Consultant and shall remain vested in the Company in perpetuity whether this Agreement expires in its normal course or is terminated by either party as provided for herein.

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Any help is SUPREMELY appreciated!

Yes.

For the certainty of the Parties, the Consultant acknowledges and agrees that the Company shall own exclusively and in perpetuity throughout the world, all right, title and interest existing now or in the future of every kind and character in and to the intellectual property developed pursuant to this Agreement. All such rights shall vest in the Company immediately upon the creation of the intellectual property and the provision of the Services by the Consultant and shall remain vested in the Company in perpetuity whether this Agreement expires in its normal course or is terminated by either party as provided for herein.

jog on
duc

 

[Hoggums]

Hello!

I need help in understanding if the following passage from a Contract means that any of my own intellectual proprietary ideas and developments will be considered the property y of the Company – because I develop it at the time of my work there?

@@@@@@@@@@@@@@@@@
5. Ownership of Intellectual Property and Work Product

a) The Consultant acknowledges and agrees that all materials, including but not limited to any and all written material, graphs, diagrams, drawings, software, software packages, data, correspondence and other documents, artwork, photographic images, video or audio materials and/or recordings, in digital form or magnetically or optically encoded materials prepared by the Consultant in relation to the Company operations and/or in the delivery of the Services in all forms of media or data whatsoever whether now known or hereafter devised (the “Work Product(s)”), shall be the sole and exclusive property of The Company. The Consultant hereby grants to the Company throughout the world and in perpetuity, all right, title and interest that the Consultant has or will have in the future, including but not limited to copyright, in and to intellectual property developed by the Consultant hereunder and the Consultant hereby waives any and all moral rights Consultant has or will have in such intellectual Property.
b) For the certainty of the Parties, the Consultant acknowledges and agrees that the Company shall own exclusively and in perpetuity throughout the world, all right, title and interest existing now or in the future of every kind and character in and to the intellectual property developed pursuant to this Agreement. All such rights shall vest in the Company immediately upon the creation of the intellectual property and the provision of the Services by the Consultant and shall remain vested in the Company in perpetuity whether this Agreement expires in its normal course or is terminated by either party as provided for herein.

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Any help is SUPREMELY appreciated!

The key sentence here is "materials prepared by the Consultant in relation to the Company operations and/or in the delivery of the Services"

Which basically means that anything you produce as part of your contract belongs to them - but if you have another client or do something separate then it belongs to you.

However,

If you copy their idea and produce something that you don't supply to them - but is based off ideas/designs they've given you then they could legally argue that material belongs to them.

 

[ducati998]

The key sentence here is "materials prepared by the Consultant in relation to the Company operations and/or in the delivery of the Services"

Which basically means that anything you produce as part of your contract belongs to them - but if you have another client or do something separate then it belongs to you.

However,

If you copy their idea and produce something that you don't supply to them - but is based off ideas/designs they've given you then they could legally argue that material belongs to them.

The contract is stating far more than that.

[QUOTEAll such rights shall vest in the Company immediately upon the creation of the intellectual property and the provision of the Services by the Consultant and shall remain vested in the Company in perpetuity whether this Agreement expires in its normal course or is terminated by either party as provided for herein.][/QUOTE]

The construction implies that the intellectual property and provision of services are contingent upon each other.

This could be read, and probably should be read, that any IP created while under contract to the Company, those rights vest in the Company, in perpetuity. With a construction in this manner, I would guess that there are clauses in the contract that provide for 'work' taken outside of the employment contract, viz, that the Company would exert ownership interests in this sphere also.

In law, privity of contract, barring the usual defences, will allow the Company to find a cause of action if the clause is violated.

jog on
duc

 

[chris7771]

thanks!

they also add the following very interesting passage:

4. Non-Compete, Non-Circumvention, and Non-Solicitation. For the term of this Agreement and for 3 years thereafter, Consultant will not (a) engage in any activity that is in any way competitive with the business or demonstrably anticipated business of the Company (b) assist any other person or organization in competing or in preparing to compete with any business or demonstrably anticipated business of the Company, (c) directly or indirectly, provide any services similar to the Consultant services to any competitor, customer or business partner of the Company or to any potential client of the Company to whom the Company has offered to provide services, unless explicitly agreed otherwise in writing by the parties; or (d) encourage or solicit any employee or consultant of the Company to leave the Company for any reason.

 

[malaguti]

thanks!

they also add the following very interesting passage:

4. Non-Compete, Non-Circumvention, and Non-Solicitation. For the term of this Agreement and for 3 years thereafter, Consultant will not (a) engage in any activity that is in any way competitive with the business or demonstrably anticipated business of the Company (b) assist any other person or organization in competing or in preparing to compete with any business or demonstrably anticipated business of the Company, (c) directly or indirectly, provide any services similar to the Consultant services to any competitor, customer or business partner of the Company or to any potential client of the Company to whom the Company has offered to provide services, unless explicitly agreed otherwise in writing by the parties; or (d) encourage or solicit any employee or consultant of the Company to leave the Company for any reason.

This last clause I have taken out in all of mine. Its too restrictive and would effectively mean I couldn't work in a similar industry (Im a software consultant, and this is just a competion/gagging clause so if I work for a pharmaceutical company, and I did very recently, I couldn't then work for another which would be deemed as competitive) If you think about it, thats just a bit daft and is practically unenforceable. This last one I always have removed prior to signing my contracts..all your other ones seem acceptable and pretty much standard.
But then this probably comes down to what you do.
If I do something, anything, its my knowledge, which I take with me onto the next client. I will even take the code with me, but what i cant do is stop their system from working after I've gone. That's where your IP is owned by them after you've gone.
Like I say, for me these are standard its just this last one that I negotiate on, enforceable or not.
Good luck

 

[chris7771]

This last clause I have taken out in all of mine. Its too restrictive and would effectively mean I couldn't work in a similar industry (Im a software consultant, and this is just a competion/gagging clause so if I work for a pharmaceutical company, and I did very recently, I couldn't then work for another which would be deemed as competitive) If you think about it, thats just a bit daft and is practically unenforceable. This last one I always have removed prior to signing my contracts..all your other ones seem acceptable and pretty much standard.
But then this probably comes down to what you do.
If I do something, anything, its my knowledge, which I take with me onto the next client. I will even take the code with me, but what i cant do is stop their system from working after I've gone. That's where your IP is owned by them after you've gone.
Like I say, for me these are standard its just this last one that I negotiate on, enforceable or not.
Good luck

Thank you very much for your replies....actually I will be doing this work REMOTELY - from my own premises - my own office - so all their data will be transferred to me - and at the same time I will be developing the project of mine - They also the following two clauses::


7. Indemnification. Company shall indemnify and hold harmless the Consultant from and against any and all losses, damages, liabilities, reasonable attorney fees, court costs and any ongoing expenses resulting from or in connection with this Agreement, or any act or omission of the Company.


and:


4. Confidentiality. "Confidential Information" shall mean any non-public information, tangible or non-tangible, relating to the Company, whether or not technical in nature, including, without limitation, any information that is designated by the Company as Confidential Information at the time of its disclosure. Confidential Information shall include, but not be limited to, any information, plans, ideas, know-how, data, analysis, financial and business information, notes, compilations, studies, documents or other information, whether in writing or not, relating to the Company, including, but not limited to, financial, commercial or business data, technologies, know how, developments, ideas, business and marketing plans, customer lists, price policies, development data of new products, market surveys, suppliers customers and any other information otherwise related to the Company, its products, its services including any document, formula, item, specifications, recording, drawings, samples, computer disc or tape which shall come into Consultant’s knowledge and/or possession.

 

[NVP]

Dont worry about it ............you would have to pay a fortune to either defend yourself of sue someone

so :-

dont do anything
or ....
dont get caught !

you are never going to cover all the bases here ..........

In my own dealings I try to avoid funding Lawyers retirements funds or new boats and cars..........

N

 

[MalcolmSm1th]

This last clause I have taken out in all of mine. Its too restrictive and would effectively mean I couldn't work in a similar industry (Im a software consultant, and this is just a competion/gagging clause so if I work for a pharmaceutical company

When i was a software consultant I used to keep those clauses IN my contract. The simple being is that this clause is not legally binding as it comes under Restriction of Trade.

Now, if the client offered the consultant paid leave for those three years (which is known as Gardening Leave) then this is binding but this clause wouldn't stand up for two minutes in a court of law.

Now, I used to keep this clause in my contracts. Why? So that I can then inform the client, agency or whomever that the contract isn't legal and then if push came to shove then the other bits about IP wouldn't stand.

Such IP clauses are common in permanent contracts and I would have those removed. When one is a consultant one is hired for one's skills and so it could be argued that the client hired you for those skills which you honed at other sites and therefore it would be unreasonable in law not to expect you to continue to develop your skills whilst working for that client.

In the end, before I jacked in contracting, my contracts were agreed over a pint and a handshake in a pub somwhere. If the client tried to rip me off then out the door I would walk. But if one is any good and has a reputation (a good one, that is) then it would never come to that. The only time I had a problem was with agencies and never the client.

Hope this is of use.

- Malc

 

[malaguti]

When i was a software consultant I used to keep those clauses IN my contract. The simple being is that this clause is not legally binding as it comes under Restriction of Trade.

Now, if the client offered the consultant paid leave for those three years (which is known as Gardening Leave) then this is binding but this clause wouldn't stand up for two minutes in a court of law.

Now, I used to keep this clause in my contracts. Why? So that I can then inform the client, agency or whomever that the contract isn't legal and then if push came to shove then the other bits about IP wouldn't stand.

Such IP clauses are common in permanent contracts and I would have those removed. When one is a consultant one is hired for one's skills and so it could be argued that the client hired you for those skills which you honed at other sites and therefore it would be unreasonable in law not to expect you to continue to develop your skills whilst working for that client.

In the end, before I jacked in contracting, my contracts were agreed over a pint and a handshake in a pub somwhere. If the client tried to rip me off then out the door I would walk. But if one is any good and has a reputation (a good one, that is) then it would never come to that. The only time I had a problem was with agencies and never the client.

Hope this is of use.

- Malc

hence why I say its unenforceable. the trouble is the agency once tried to enforce that I was in breach of my contract when the client tried to employ me directly, which is often another clause. They are there, and therefore this is what you are signing up to. hence I am choosy as to what goes in or out.
Each to their own though, I personally want no ambiguity when it comes to these things.