Hello!

There has recently been a dispute about the rights to a computer program , which has been talked about a lot in public, and in which I and my colleagues took some part. As a result, a large number of questions arose about how such a thing could happen, how to behave so that it did not happen, and so on. Moreover, questions arose from both the conditional “programmer” employees and the “employers”. And this is despite the fact that Habré has quite a lot of good publications on this topic, for example, here .

I summarized all the questions and tried to answer them briefly - without quoting legislation and judicial practice and without complicated legal terms. I hope you will be interested.

If you really, really have not heard anything about intellectual property, office works and other legislative categories, I recommend to get acquainted with a small educational program. If you have at least a little topic - you can browse further.

1. I developed a program. Who does she belong to?

Most likely you. Check that at the time of creating the program you did not have an employment contract and / or job description, which at least in some way imposes on you the obligation to create programs. And also check that you didn’t have any other contract that provides for the transfer of rights to the created program to the customer. In addition, the situation may change if you created a program before 2008 (then the laws were slightly different).

2. The employer instructed me to develop a program. Who will she belong to?

If you have a labor obligation (direct or indirect) to create programs in your employment contract, job description, or other document signed by you, then your employer. And it should be exactly the duty - that is, the condition that you do some work (involving the creation of programs) and get paid for it.

As for the indirect obligation, the subtlety here is that the courts often recognize the conditions of employment duties as providing for the creation of works, even if such conditions are formulated quite widely. For example, in this case , the employment contract between the author of the program and the employer provided for quite extensively formulated labor duties: “organizing the provision of information activities of the library and information databases”. Nevertheless, the court recognized that the specified work duties included the creation of computer programs.

If the work obligation is not provided, then the program most likely belongs to you (see the answer to question 1).

3. I developed a program using a corporate computer and other employer resources. It was not my job to create a program. Who does she belong to?

Most likely you. As I said, you need to remember:

• about job duties;
• about the presence / absence of other agreements;
• about 2008.

Also keep in mind that employers do not like very much when their resources are used for personal purposes. They may be deprived of bonuses, reprimanded or dismissed (if there have been violations before).

4. I created a program during business hours. It was not my job to create a program. Who does she belong to?

Most likely, you, and, still, remember:

• about job duties;
• about the presence / absence of other agreements;
• about 2008.

Again, employers, as a rule, are not very fond of when employees do something different during their working hours (although there are exceptions ).

5. I created the program, and it is written in my employment contract that everything that I created belongs to the employer. But it was not my job to create a program. Who owns the program?

Most likely, you, because not everything that the employer has written in the employment contract, is valid. We look at the answer to question 1.

6. I created a program on behalf of the employer, during working hours, using a corporate computer and other resources of the employer. In addition, it is written in my employment contract that everything I created belongs to the employer. It was not my job to create a program. Who owns the program?

Most likely, to you, a set of factors does not work here. We look at the answer to question 1 and especially note that the program was not created until 2008.

7. I created the program and handed over to the employer / friend / it is not clear to whom its copy. Who owns the program?

Most likely you. The transfer of a copy of the work does not entail the transfer of rights to it.

8. I created the program and handed over to the employer / friend / it is not clear to whom its source code. Who owns the program?

Most likely you. The source code is also a copy of the work.

9. I created a program whose development was part of my job duties, but the employer did not pay me a remuneration. Does the program stay with me?

No, this does not affect the transfer of rights to the program. But you can try to sue the employer for a fee.

10. I am a freelancer, and created a program for the customer. Who does she belong to?

If you are an individual, then you, unless otherwise expressly stated in the contract.

If you entered into a contract on behalf of your company, then to the customer, unless otherwise expressly stated in the contract.

11. I am a freelancer, and the customer ordered me to draw a cobblestone texture. I created a program that generates such a texture. Who owns the program?

You, if you have not written otherwise in the contract with the customer and the customer has not ordered the creation of this program separately.

12. I, together with fellow programmers, created the program - the main corporate product of the company. But I myself work as a cleaning manager. Who owns the program?

If only in your company creation of programs is not the responsibility of the cleaning manager, the part that you have created is yours. The rest is for the employer.

Moreover, if the part you created is not independent, then you and your colleagues will be considered co-authors. And between you and the employer will be the joint possession of the exclusive right to the program.

13. I am a programmer, and I work in a cloud computing software company. I created a computer game. Who does she belong to?

Theoretically you, unless it was your responsibility to create computer games. But it will be extremely difficult to prove it.

In this situation, you may find it useful to prove that:

• the program is not created during business hours;
• the program was created on personal equipment;
• The employer did not assign you to create a program.

14. I work as a cleaning manager remotely for a foreign company. I created a program on behalf of the employer. Who does she belong to?

Most likely you, but there is a nuance.

In different countries, obviously, different legislation and other criteria may be established to recognize the work as work (including whether or not the employer instructed). In this case, as a rule, in the event of a dispute over the rights to works, the legislation of the country in which legal protection is sought is applied — that is, where they went to court.

Accordingly, the Russian court is likely to rule in your favor, but with foreign ones it is not clear how it will be.

15. I work as a cleaning manager in the company. My employer won the competition held by FSUE, to create a program - accounting system. The employer instructed me to create a accounting system, I created it. Who owns the program?

Most likely you, but the situation is complicated. It should be borne in mind that disputes with the state often end in a different way than it should be according to the law.

In an ideal world, according to the law, if relations with you were not formalized, the employer does not have the right to the program, and, accordingly, he has nothing to transfer to the FSUE under the contract. As a result, if, nevertheless, the employer transfers the program to FSUE, and FSUE starts using it, then the employer and FSUE will be the violators, and both of them will be able to demand that they stop using and pay compensation. The employer, in addition, will still be responsible to the FSUE for the improper performance of the state contract.

However, in practice, and taking into account the provision established in Article 1298 of the Civil Code that the state should in any case be transferred either an exclusive right or a right of use (license), the chances that the court will satisfy the requirements to ban the use of the program and collect compensation in relation to FSUE, they are very small.

16. I work as a cleaning manager. I created a program that uses resources (libraries, databases, etc.) owned by the employer in my work. Who owns the program?

Most likely you. Using other people's resources cannot deprive you of the right to a work created by your creative work (there must be a creative contribution, and not just a technical selection of already existing solutions).

But an employer can make demands on you related to the use of such resources without the permission of the copyright holder.

17. I work as a cleaning manager. I created a program that uses resources (libraries, databases, etc.) owned by third parties and distributed under the GNU GPL license. Who owns the program?

Most likely you. Here is the same situation as in the previous question. Check only that you comply with the requirements of the GNU GPL license (or other license) so that the right holders do not make claims against you.

18. I am an employer, my programmer went to a competitor and handed him all the development. What should I do?

Did you have a trade secret regime and / or prisoners with NDA programmers? If not, it is almost impossible to hold the programmer accountable for disclosing information.

Regarding the competitor, there are a few more options. If he began to use the program - you can make him claims about the illegal use of this program (if you are the copyright holder). If among the transmitted information was information that meets the signs of production secrets, you can try to use this basis. You can also try to use the rules of antitrust laws.

A characteristic story is a dispute between the company INEC, its former employee and the company RISKFIN. The courts eventually refused to meet the requirements for the employee, but satisfied the claim to a competitor.

19. I am an employer, my programmer destroyed all copies of the program created by him before being fired. What should I do?

There is a case when the employer managed in such a situation to recover from the programmer the losses incurred, in the amount of the cost of developing a similar program. You can also try.

20. I am an employer, and I want to prohibit my employees from working with competitors. What should I do?

You can try to ban anything, nothing terrible will happen. But such a ban will not be valid, and the workers, realizing the freedom of labor guaranteed by the Constitution, can go to work wherever they want, whatever agreement they sign. And they will not be responsible for this.

It should also be borne in mind that in some countries (for example, the United States), concluding agreements on non-competition with employees is allowed - with certain restrictions and with the obligatory payment of additional compensation to employees.

21. I am an employer, and I want to prohibit my employees from disclosing any information about the company's developments to anyone. What should I do?

Enter a trade secret regime (including accepting relevant local documents) and conclude with NDA employees and counterparties. This is the minimum of what can be done, then you need to look at the basis of a specific situation.

22. I ordered the development of the program from company N. After I started using the program, N employees came to me, said that they had rights holders, and asked for money. What to do?

1. Immediately stop using the program, if possible.
2. With the help of your lawyer, contact the N. company. Notify that in case the situation turns out to be in your favor, you will demand compensation from the company N.
3. Act on the situation, based on the circumstances.

23. I am an employer, and I haven’t properly designed my employees and freelancers. They created a program that I need. What to do?

Two options:

1. Sign an agreement with employees and freelancers on the alienation of rights to a work or license agreement, if this suits you. In no case do you need to conclude backdating an employment contract, an author's contract, etc.
2. Do not use this program.

24. I am an employer. I correctly designed my programmers and other individuals who create intellectual property in the company. Can i relax

You can relax a little, but you need to keep two things in mind.

Firstly, for the creation of works of service you need to pay a remuneration (separately from the salary) if you started using the work (or transfer the rights to it to another person, or notify the employee about keeping the work in secret). Failure to pay the remuneration will not deprive you of the rights to the programs created, but will be the basis for bringing an appropriate lawsuit against you (see the next question).

Secondly, if you do not start using the work for three years, do not transfer the right to it to another person and do not notify the employee about keeping the work in secret, the exclusive right to it will be returned to the employee.

25. I am an employer. and do not pay remuneration to programmers. I can relax, because the rights to the programs still remain with me?

Yes, the rights to the programs remain with you, if you have everything properly executed. You can relax until programmers come to you with a claim for recovery of remuneration for all the programs created. The amount of fair remuneration will be determined by the court.

26. I am an employer. I have registered all the computer programs created by my employees at Rospatent. Does this mean that the programs belong to me and can I relax?

Registration of programs in Rospatent does not give rise to any rights and is not an absolute confirmation of their presence. Until it is proven otherwise, you will be considered the copyright holder, but if a dispute arises, and it reaches the court, then the information in the registry can be challenged.

27. I am an employer, how can I ensure that employees and freelancers do not take away my rights to programs?

A few recommendations:

1. Enter management records of your rights to software and other intellectual property (both exclusive rights and rights granted under a license agreement) and monitor the emergence and granting of rights to such objects;
2. Do the audit as indicated in the answer to question 30;
3. Understand how your employees are decorated, and that all individuals who create intellectual property have corresponding obligations in the employment contract;
4. Understand how your documents are drawn up with persons not working under an employment contract;
5. Control the accounting of the created objects in the accounting (later it will be useful as proof of the emergence of rights);
6. Enter the mode of trade secrets, create organizational, legal and technical measures to protect company confidential information;
7. Try not to bring the relationship with employees to conflict and (or) try to resolve such conflicts is not in the legal plane.

28. I am an employee / employer, and I found that my employee / employer is using my program. What should I do?

1. Make sure the program is really yours;
2. Make a claim and send it to the offender. I recommend doing this, even if it is not necessary by law, since at this stage the problem is often solved;
3. Assess the feasibility of going to court with a request to discontinue the use and recovery of compensation;
4. If appropriate - contact the court.

To perform the above steps, I recommend to involve a lawyer, since each situation is unique and must be assessed separately.

29. I am an employee / employer, and my employee / employer sued me because of the program I used. What should I do?

1. Immediately stop any use of the program, if possible (I recommend comparing potential losses from cessation of use and losses from recovery of compensation. Compensation in a critical variant can be recovered in the amount of up to 5,000,000 rubles, twice the cost of the copy or right of use, for each use case) .
2. Contact a lawyer.
3. Understand whether you have rights to use the program.

30. I am an employer. I read all the above questions and the answers to them, after which I was anxious. What should I do?

Take your lawyer and do with him a small audit of intellectual property in the company. The audit should be done according to the following plan:

1. What does our company do?
2. Do we have software that we sell?
3. Do we have software that we use within the company?
4. Who is the author and copyright holder of this software?
5. How and from whom did we get the right to use the software? At this stage, it is necessary to carefully check that there is an appropriate basis for each object: a contract, an open license, an exclusive right, etc. And, ideally, the chain should be traced directly from the author - the natural person who created the software.
   If at this stage software is detected that is being used without an appropriate basis, its use must be immediately discontinued prior to receipt of the basis for use.
6. How are relationships with people creating software formed? If they are employees, is there a specific obligation in the employment contract with them or in their job description that includes software development? If they are freelancers - is there a condition in the contracts with them about the transfer of the exclusive right to the customer? In addition to programmers, don't forget about testers (they write auto-tests), designers, managers (if they also create something directly, in addition to the manual).
7. Is there a separate standard job description or form of an employment contract for persons creating software and other objects of intellectual property?
8. Are there accounting (including accounting) created objects? Are all objects identified and their rights taken into account)?

For your own comfort, such a small audit will suffice.

In principle, in almost all questions you can replace the program with any other copyright object and the meaning does not change. And, for example, in patent law, a slightly different story, there service objects are recognized as objects, the creation of which was part of employment duties, and objects created for a specific task of the employer.

If, after reading these questions, your curiosity has not been exhausted, and even more so if there are new questions, I will be glad to answer them in the comments. The most interesting questions will complement the post (so in the title - 30+).