Copyright Assignment

[benanamen]

I am 192 hours into a project and NOW the owner of the company (not the one who I have been working with) wants a contract signed which includes the assignment of copyright ownership. My rate was based on the exclusive use of the application as a complete work for use by this company only.

 

They tell me now that they want to licence the app to other companies in their industry.

 

My question is, how have any of you dealt with the assignment of copyright (Ownership of the underlying code). Do you work at an increased hourly rate?, Negotiate a flat rate for the transfer of copyright? Since there is much more they want to do it is impossible to know how much more code there will be for them to own so doing a flat rate agreement today doesn't seem wise.

 

In all my years of coding this has never come up.

[kicken]

I've never dealt with that situation, but if I were to come across it I think I'd be inclined to either negotiate an increased rate, or negotiate a licensing deal rather than a full copyright transfer.

 

Since you'd have no rights to the code after signing such an agreement I think additional compensation in the form of a higher rate would be reasonable. You'd have to decide how much of a rate increase that loss is worth and negotiate with them. You'd also want to consider if you want any increased compensation for work already done or just from this point forward.

 

Alternatively you could try and retain your ownership of the code and just license it to them. The terms of the license would permit them to sub-license it to other companies in exchange for some sort of fee to you such as a yearly payment or a per-sub-licence payment. This might be more hassle than it'd be worth though unless you have some specific plan to re-use or re-sell the code.

[benanamen]

Thanks for the reply. I have concluded that licensing is the right direction as opposed to copyright transfer. Issues currently identified with copyright transfer is:

 

A: App includes third party code and their licensing parameters may be an issue. (Jquery, bootstrap..) 

B: App contains often used code such as login, forgot password, and password reset. Could not transfer ownership of that code.

 

So, question is now narrowed to compensation for a licence to sub licence and the conditions for that. I always give an "implied" unwritten license for exclusive use to the hiring company that it was developed for. To date, I would never use or need anything I have developed.

 

Any additional feedback on this welcome.

[requinix]

A: App includes third party code and their licensing parameters may be an issue. (Jquery, bootstrap..)

Then they need to know about that. But many projects like Bootstrap and jQuery use the MIT license which allows for virtually any usage, including resale, provided the copyright blocks are left alone and the warranty statement (or more precisely the lack of warranty) is included with a copy of the license. So this likely will not be a problem.

 

B: App contains often used code such as login, forgot password, and password reset. Could not transfer ownership of that code.

I assume the issue is that the "often used code" is your own personal license-able code which you've reused with the application?

 

a) You treat those parts as "third-party library" code, and add it to their application by granting it/the client with an appropriate license - eg, one that would grant them the ability to share the code and/or application. Like the MIT license. You can do so specifically for this client without affecting licenses granted elsewhere.

b) You rewrite the affected parts so they're no longer your own personal code.

 

I always give an "implied" unwritten license for exclusive use to the hiring company that it was developed for. To date, I would never use or need anything I have developed.

Do not do "implied" licenses. It should always be written in the contract, and when it isn't it's generally legally assumed that the product of your work under their employment is automatically their property.

[benanamen]

After research, there are no license issues with the aforementioned softwares as you said. I am not anyone's employee so this does not fall under the "Work For Hire" laws. As an independent contractor I automatically own the copyright to the code unless there is a written transfer of those rights.

 

The solution that made sense is what @kicken proposed. Thanks for the feedback to both of you.

 

 

 

Alternatively you could try and retain your ownership of the code and just license it to them. The terms of the license would permit them to sub-license it to other companies in exchange for some sort of fee to you such as a yearly payment or a per-sub-licence payment.