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Beta-Testers and Intellectual Property?
Posted by
Cliff
on Tue Feb 05, 2002 12:36 PM
from the tricky-legal-issues dept.
from the tricky-legal-issues dept.
cozimek asks: "I've got a question I'm sure many other Slashdot users have dealt with. My startup has been starting programming development with testing from our beta-clients. One of these clients, however, has begun discussing intellectual property rights. They believe that they deserve rights to parts of our software because they have helped give us advice through the development process. We think we own it all, and that they should be happy to have our services, tailored to their needs, for free. Has anyone dealt with these issues? Has anyone created a beta-tester contract?" As with all such issues, the devil is in the details...particularly the contractual ones. If you've had such issues before, from either side, please let us know how things turned out.
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Beta-Testers and Intellectual Property?
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Re:Not unless they suggest improvements (Score:4, Insightful)
IMHO the client is elbowing for some negotiating room later, i.e. we helped you get the bugs out, give us a better pricing. If they're expecting a cut of the pie, tell them thanks but no thanks and drop them as a tester. That sort of weasel mindedness belies something worse is behind it.
Ideas are (almost) Worthless (Score:4, Insightful)
Ideas are a dime a dozen... everyone has an idea for a great game, TV show or book.. but how many people devote years of their life to actually make one happen?
Re:Ideas are (almost) Worthless (Score:4, Insightful)
Unfortunately, we've seen examples where someone comes out of the woodwork and sues for a stolen idea, after some large number of people and time have gone into bringing it to fruition.
On the other side of the coin, like the example of the weedwhacker, some little guy invented the thing and got robbed by big industry anyway.
Best to halt all work with the disputing party until everything is clear. If they don't want to benefit from the privilege of giving input into development of a product they use, I would drop them, particularly before lawyers show up.
Of the readership on slashdot, how many would love the opportunity to give constructive input to the design and development of games, utilities, movies, etc? Pretty much everyone, right? Before arriving at the quick answer how much thought did you put into 'hey, wait, then i'm a contributor and should get credit, money, babes, a cameo, etc.? Few, I betcha. Best to for would be beta tester and consultants to weigh their own expectations before involving themselves, not later. Much to messy when it come to later.
you got it backwards (Score:5, Informative)
- Programmers, software designers, UI designers, software engineers, etc. Yes, some of them are better than others, but most products are not so complex that you can't find lots of people willing and able to develop them.
- Business people and managers with the vision and persistence to create and stick with the product.
- Customers that provide lots of feedback and suggestions for enhancements.
Of those, for any good product, the customers are going to do most of the design and drive the evolution of the product.Contracts rule in this one (Score:3, Informative)
I'm not sure what kind of contract you had your beta testers sign when they agreed to do the testing, but I'm sure it specified clearly that not only is your IP confidential, but that it is strictly your IP and they have no rights to it. Since they willingly agreed to these terms, there is no real argument for them here.
Even in the absence of that though, since you (or your company) created the IP, you intrinsically own it. No one else, either a tester or otherwise, has any legal claim to your code.
Re:Copyright Law (Score:5, Insightful)
Not necessarily. Work done under commission is implicitly the property of the employer, not the employee. In the case of beta testing, a software company solicits advice from testers, "paying" them by not charging for use of their software.
And there's nothing illegal about a company using someone else's idea -- unless that idea is patented, copyrighted, or acknowledged as hands-off in a mutual NDA. We see this all the time.
WANL (Score:5, Informative)
Paying for legal counsel is part of the costs of running a company, and you get what you pay for.
You missed the boat in not having a lawyer draw up a contract for beta testers. Don't screw up again by not having a lawyer deal with someone trying to claim rights to your property.
But we have knowledge of what's usual and customar (Score:4, Insightful)
Here's a clue - if somebody says "hey, can my (boss|client|contractor|whoever) do this?" and we've seen the same situation play out a dozen times, always with the same results, we don't need a lawyer to predict the likely outcome of the latest incarnation.
Of course people should consult lawyers when there's any real question about a situation, but we aren't infants who need to run to a lawyer for every single damn question. E.g., I occasionally get "invoices" for things I never ordered and things of no possible interest to me. (E.g., a directory listing for my "gasoline station.") I don't need to pay a lawyer to learn that they're probably scams and it would be a waste of my time and money to pursue the matter.
Bottom line, IMO, is that the beta tester was way out of line in making the request. Unless the success of the company depends on their good will, I would have told them to get lost and not given it another thought unless they actually hired a lawyer to pursue their bogus claims. Checking with a lawyer would be a waste of time and money -- unless you really want to pay a few thousand dollars to learn that there is no precedence for such claims. (AFAIK - I have never heard of a successful claim despite almost 20 years in this field.)
As a software developer myself... (Score:5, Insightful)
call a lawyer (Score:5, Informative)
Nonfree software requires EULAs, sorry, but that's the only way to avoid little messes like this. Just call a lawyer, explain the situation, get him to resolve the situation. Otherwise you're gonna end up having to go with the results of an 'ask slashdot', which is never pretty.
Obvious answer (Score:4, Insightful)
Barring that, here is what is ethical:
If a tester recommends a feature, they should be able to recommend that to anyone. If they mention a new way to do something, they can mention that to anyone. If they mention a new color scheme...
Basically, any ideas they have are their own, and they should be able to share them anywhere. The specific implementation, however, is your code. And unless you open it up in some way, it stays your code. Piss on them. (And this is spoken from someone who does a LOT more testing than programming.)
Tell them to lay off the bad drugs (Score:5, Insightful)
If they actually contributed code to your software, or designed hardware components, then they may reasonably regret giving it to you for nothing, but if they gave you stuff with an understanding that it would be used in your product, without making it quite clear (preferably by contract) that they expected to be part-owners of the resulting product, then I don't see how they could possibly have an argument that could hold up in court.
Another question: is this a copyright or patent issue? For copyright, the implementation is all that matters, so if they didn't give you actual code or circuit diagrams that are present in your final product, then they have no basis to claim ownership. If patents are at issue, then it could be a little murkier.
*what* intellectual property? (Score:4, Insightful)
If they sent you emails with ideas about how to improve the program, then they might be able to argue for a copyright on those emails, but that doesn't give them any rights to code that you wrote to implement the ideas.
If the ideas they sent you are patentable, then why on earth did they disclose them to you before either filing a patent or signing an NDA?
IANAL, but either you left out some very significant details, or they're blowing smoke.
Beta tester agreement (Score:4, Interesting)
Enough historical precedent (Score:4, Insightful)
It's unheard of for beta testers to obtain IP rights to what they're testing, so without a contract giving them such rights, I'd say the reasonable assumptions for both parties would be that there is no IP ownership promised to any beta tester.
I think they'd have a more difficult time in court proving that there *was* some reason for them to think they should have partial IP ownership, when the standard way of doing things clearly is not this way.
I'd either ignore them, and let them fade away, or hire a good IP lawyer, who probably wouldn't need to spend much time on the issue, sending them a one page letter outlining why their claims are baseless.
-me
If you're my beta tester you are working for ME. (Score:4, Informative)
Yes, those are amazingly-harsh terms. If we didn't have them we would be screwed. Every major company has those terms for a reason. If you don't like those terms, don't beta test.
For the record, we've never had to sic our barely-paid lawyers at anyone. Yet.
Standard Clause and Patents (Score:3, Informative)
Second, unless you have a NDA with them where you cannot disclose what they say... you are probably just fine. There are two cases: (a) what they have contributed is patentable, in this case they have one year to file the patent; (b) what they have contributed is copyrightable. In case (a), I wouldn't worry about this as most companies won't go through the expense; and (b) make sure that you have a clean-room implementation of it so that you don't violate the copyright.
In any case.. you need a lawyer. And, in the future, you may want to pay $$$ for beta-testing so that your testing results can be considered a "work-for-hire". I AM NOT A LAWYER, THIS IS JUST MY EXPERIENCE WHICH MAY NOT REFLECT YOUR PARTICULAR LEGAL ENVIRONMENT.
Best,
Clark
Offer to license your code back to them (Score:3, Insightful)
Redevelop the portions of software that they developed code to and write a EULA next time.
The slashdot precedent (Score:5, Funny)
Inventorship and IP rights (Score:5, Informative)
In the realm of patents, you have no rights unless you are an "inventor." The test for inventorship is stated in the Manual of Patent Examining Procedure (available at The United States Patent & Trademark Office [uspto.gov] website) in section 2137.01:
"The definition for inventorship can be simply stated" 'The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor . . . .Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993. One must contribute to the conception to be an inventor."
The rights of corporations to have inventions assigned derives from the fact that they pay inventors to invent for them. Thus, unless your beta testers contributed to the conception of part of the invention, they are not inventors and have no rights. "[O]ne who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a coinventor." Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982).
Copyright is different. Where patents protect functionality, copyright protects the expression. Thus, while you may copyright source code, someone else may write different code to accomplish the exact same result without infringing on your copyrights. However, for a beta tester to have rights in this area, they would have to contribute code (source or object).
Generally, beta testers are compensated for their effors through reduced license fees for the finished product (or even free copies). However, this is usually done before allowing someone to be a beta tester. Depending on the details on the situation, it may be well worth your while to consult an attorney who specializes in IP issues. The typical patent infringement battle, depending on the complexity of the technology and claims asserted, can run well in excess of $500,000. Fees in the multi-million dollar range are not out of the ordinary.
I dealt with this at work in December (Score:5, Informative)
We're building a huge intranet tool, and that tool has some very cool org charts it can generate. At one brainstorming session, a person was throwing out ideas and then capped his suggestions with "of course, this is all my own IP, so I retain rights to all of it." Since we're thinking that this might someday become Open Source, asserting his IP was unacceptable.
Our solution? We immediately asked him to leave the meeting, took him off the invitations to future brainstorming sessions, and contacted our lawyers. I am VERY glad we kicked him out of the process within minutes of him spouting off about his IP. If he had stayed, we may have had to rebuild or drop basically anything he talked about. Now we can at least say that we're clean-rooming it.
work-for-hire (Score:3, Interesting)
If they're doing it for free, then that might not apply...
Regardless, they're just testing what you did. Their reimbursment is the money you pay them up-front... If they want a piece of the product then that would have to be negotiated up front.
There is a clear legal answer on these facts . . . (Score:3, Insightful)
Clearly, it depends upon the exact facts of the commercial relationship between the developer and beta tester. It depends upon the specific nature of the advice and the circumstances under which they were given.
It depends upon so many things, that anyone who tells you the answer is clear on the outline provided is clearly just selling something. I *AM* a lawyer, and I am here to say this: that right now you need to stop asking general advices of the technical community and begin speaking to a competent lawyer upon whose advices you can reasonably rely.
This much is certain, these issues will ALWAYS be more expensive after they have exploded than beforehand. The time to call a lawyer was when beginning to distribute the software and disclose the object code to third parties.
Then, as now, there is only one answer to this question:
It depends. Call a lawyer.