An employer versus an employee and a competitor - who wins the intellectual property dispute?

Based on real events occurring everywhere and in the framework of the controversy here

This story began quite banal. Employees while working at a certain company created a program that was successfully sold. Then they founded their own company and began to do what they know best - they continued to sell the same software. The former employer was outraged by this approach to competition and tried to ban the use of "his" product in "foreign" interests. The authors were of the exact opposite opinion. Noticing that the issue is not peacefully resolved, the employer sues. Here you have a rather typical case from judicial practice.

Who is right? Will the court bring the authors to justice or take their side?

Of course, we are interested in what the court decided. Who can not wait, can follow the link and amuse their curiosity. But we do not recommend it yet, because it is more interesting to consider more fundamental questions: how did the parties to the conflict come to a direct confrontation? Was it really necessary to bring to court? What are the globally miscalculated sides? And, finally, how can you not get to this life yourself?
')

Let's figure it out!

The moral side of the question is left out of the brackets, although it is certainly interesting. However, according to the materials of the case, we can only guess at the motives of both parties, and we will not be doing this.

But the solution of the issue in the legal plane will depend on several factors. Let's look at them and see what the cause of the conflict was?

1. Wrong place.

Yes, we are not in America. There, for example, everything would be simple. Under US law, the results of intellectual activity of employees automatically go to the employer. Incredibly, but a fact: slavery was abolished, but the remnants remained.

Our country is free and the legislation is not so tough to defend the interests of the employer. The question is solved depending on certain circumstances. And they are not always easy to install.

In Russia, the employer is not easy to get the exclusive right to work.

For this, he needs to fulfill a number of conditions:

1. the work must be created within the limits established for the employee (author) work duties - clause 1 of article 1295 of the Civil Code of the Russian Federation;
2. a labor or civil contract between the employer and the author should not be otherwise provided - paragraph 2 of article 1295 of the Civil Code of the Russian Federation;
3. the employer within three years from the day when the work was placed at his disposal, must start using it, transfer the exclusive right to it to another person or inform the author about keeping the work secret - clause 2, article 1295 of the Civil Code of the Russian Federation. Otherwise, the exclusive right to the work of service after three years is returned to the author.

Usually the puncture is already on the first paragraph. Without a competent employment contract and a detailed job description employer can not do. Without them, in court there is not the slightest chance.

Therefore, with our widespread negligence in relation to documents, the employee is in a better position. Under a standard employment contract and a formal job description (if it exists at all!), The employer will not be able to prove that the work was created within the scope of employment duties. But the author may well insist on the illegality of the use of his works and decisions, and yes even receive compensation. For example, as in the case of Kovrov inventors, who demanded payment of remuneration from the employer. The case ended in an amicable settlement . The amounts of compensation were withdrawn from the published decisions, but we dare to assume that the workers were exactly satisfied.

And here, after all, it’s not only that, and even not so much that there can be a conflict between the employer and the author (although this case cannot be ruled out). There is such a property in good products: as soon as they start to bring money, they immediately try to copy them. And in the event of a dispute with a competitor, the employer or customer will not be able to prove their rights.

There are plenty of such disputes in the courts too! Let us give the most striking example, which is interesting not only by the popularity of the product, but also by the dynamics of the legal grounds for the denial of rights protection. At first, allegedly the right holder is denied due to the lack of documents , and then with their inadequate quality . Although, it would seem, these rightholders should have been levied with all the documents “to the fullest”.

If the employer fulfilled the first paragraph (provided the establishment of official duties and the work of the author within their limits), then with the second and third questions, as a rule, does not arise. But the acute question of the author's remuneration, which is not included in the salary and must be paid above it . Unfortunately, this question is often carefully avoided by the employer.

Here we are very close to the most important reason - this is the inconsistency of the interests of the employee and the employer : the employer wants to get rights and protect them from third parties, but does not want to pay remuneration for them, but the author wants additional remuneration, but prefers to keep rights.

2. Not enough time.

To resolve this contradiction, it is necessary to agree in principle. It is difficult and long to negotiate. And time is running out. And the question is postponed for later. In our practice, we know the longer the pull, the harder it will be to decide later. Especially if the money goes for the sale of the product.

3. Lacked knowledge and perseverance.

Even if everything is fundamentally agreed, verbal agreements do not work. They need to be fixed in writing. And here two questions arise:

1. Meaningful - you need to correctly state everything and agree,
2. Formal - you need to approve and sign, exchange documents, organize storage, etc.

As soon as you think how long it will take, your hands will fall and the easiest solution will come: “Maybe it will blow it?”. Do not carry, believe me.

You can, of course, delegate the decision of a question to a consultant or ask your colleagues. But not the fact that the decision of colleagues is ideally suited to your situation, and the consultant is unlikely to cost reasonable money.

Thus, the problem is difficult to solve, long and expensive. As a result, everything starts to take its course, even if the common interest is obvious and important for both parties. After all, the employer still wants to get rights, and the author - his remuneration.

In the meantime, summarize.

Because of the reluctance to solve the problem at the start, even with the difficulties described, the parties get an order of magnitude more problems. And these problems are solved, firstly, according to the rules of the zero-sum game, and secondly, in the event of a loss, they entail much more significant costs than is required to solve them at the start.

There is an exit?

Ideally, the employer and the author agree on the shore. Fundamentally, two important issues need to be resolved: transfer of rights and payment of remuneration .

After reaching an agreement - issue in writing:

• employment contract
• job description
• local statutory act of the employer, for example, the Regulation of intellectual activity

Document templates are posted on the HABRE.

Further, in the process of working out all relations in accordance with the Regulations: sign tasks, reports on their implementation, acts of transfer of results and payment of royalties.

Such an approach will not only avoid disputes in the future, but also guarantees further productive cooperation. A clear understanding of the situation and the consolidation of relationships is a global good that allows you to avoid a zero-sum game and start fruitful cooperative activities.

Therefore, even if there is no conflict in the future, the formalization of the relationship is still beneficial and clearly worth the effort. After all, registration in itself already minimizes the risk of conflict, and also makes it possible to protect rights from violations by unscrupulous competitors.

You will say, it is clear what to do is useful. But it is difficult, long and expensive. How can I optimize resources for work? We have the answer to this question, but we will postpone it for our following materials.
Do not forget to subscribe, about copyrights and all that will be still full.

(c) Kirill Mityagin