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Programming IT Technology

Beta-Testers and Intellectual Property? 304

Posted by Cliff 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? More

Beta-Testers and Intellectual Property?

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  • You don't own IP because you pointed out a problem; you have to suggest a solution.

    • Re:Not unless they suggest improvements (Score:4, Insightful)

      by ackthpt ( 218170 ) on Tuesday February 05, 2002 @01:52PM (#2956477) Homepage Journal
      Even suggesting is pretty shaky, I mean, I could suggest you allow users to hit Escape and drop focus on a certain control, but actually coding it makes it real. I could suggest Slashdot change the meta-moderation system to include the context of moderation (not that this deserves +1 anything, but that it got +1 in the right category, i.e., does the moderator know how to actually moderate), but short of me trucking down to the USPTO and and requesting a patent on this feature, forget it, it's not mine.

      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.

      • It depends what kind of IP you're talking about. As we all know, you don't have to have a coded implementation of a software concept in order to get a patent on it. As long as you can describe it to the level of detail required by a coder of ordinary skill to pick it up and make it real, you've "enabled" the invention in the eyes of the PTO. Any actual code conforming to your software spec is considered to be merely an embodiment of your invention, and not the invention itself. Coders do not win the pissing contest at the PTO.

        It's true that you don't own the patentable invention unless you file it at the PTO, but the company to whom you provided the fix can't (legally) claim it in a patent, because you're the inventor in the eyes of the PTO. Of course, if you agreed to assign your rights to any IP before doing the beta test, that's a whole nother story.
        • It depends what kind of IP you're talking about. As we all know, you don't have to have a coded implementation of a software concept in order to get a patent on it. As long as you can describe it to the level of detail required by a coder of ordinary skill to pick it up and make it real, you've "enabled" the invention in the eyes of the PTO. Any actual code conforming to your software spec is considered to be merely an embodiment of your invention, and not the invention itself. Coders do not win the pissing contest at the PTO.

          Of course, this would be the very definition of "Bad Faith". Worse, if you're some kind of jerk or idiot, you intentionally direct the developer to include something which you know is covered by another's patent and don't reveal that.

          "Hi, I'm from Macrostuff, and that idea of ours you put into your product, well, we applied for a patent before we gave you the spec and now we want all your base."

      • Microsoft provided free product to their beta testers. You did not have to pay to become one.


        The agreement held that you did not have any rights to what you suggested, but as compensation you would receive free product.

        • Microsoft provided free product to their beta testers. You did not have to pay to become one.

          Au contraire, mon frere. You pay in your time and effort. More importantly and sadly, you pay in self-respect.

          There's a reason for the saying: "Friends don't let friends install Microsoft software." Once you start down the path of the dark side, forever will it keep you...

    • A suggestion is not enough, the person would have to do actual work - ideas cannot be copyrighted. The implementation of those ideas, however, can be. So if your beta tester says, "Yeah there's a problem here," that's not enough. If s/he says, "There's a problem here, you might want to try this," still not enough. If s/he says, "Here's a problem, I wrote up some code to fix it for you," and you *use* the code, you've got a problem.
      • You've got a more basic problem if you ever give code to someone for evaluation without getting him/her to sign an agreement 1) acknowledging your ownership of the IP in the beta version provided and 2) agreeing to assign all IP rights in any fixes provided to you.

        Also, the "you might want to try this" answer might be enough. If that solution can be conveyed in block diagram form that is detailed enough for an average programmer to reduce to code that works, the PTO considers this to be a "software invention". Coding is not required to patent a software invention.
    • First of all, any contracts that you signed will affect the relationship between you. You can get IP transfers, define the parties relationships (e.g. consultant providing work for hire), etc. You need to work up a contract for anyone who has access to your IP, period. And, as everyone is saying, this is important - go pay an attorney to go on the record giving you advice. What I'm saying here is not the kind of advice you should have your company rely on.

      Outside of any contracts:
      If you are talking about getting patents on this software, then your invention is defined by the eventual claims in your patent. Only the inventor can apply for a patent, so anything that someone else came up with is not fair game for your claims.

      If the betas pointed out bugs and difficult areas in your interface, then they really aren't inventing anything. They haven't materially added to the invention, they have no new and useful material, they haven't implemented improvements or changes. This kind of beta feedback probably doesn't warrant them claiming inventor status.

      If the betas suggested improvements to the interface, like additional sections, a better way to implement a section, or an additional functionality of your software ... then there is more ground for considering them an inventor in that particular aspect of the software (if their suggestions are implemented). You can try to get around it by saying their suggestions are obvious extensions of your original invention, but if it was so obvious (the argument goes), then why didn't you have it in there in the first place?

      Remember, though, that if you don't claim the features on which the betas are/could be considered co-inventors, then they aren't part of your IP. And they aren't inventors, with the attendant use rights, of the other parts of your software, even if they are inventors of a piece of it. Also, if your company and the betas are co-inventors on the pieces, then you all have similar rights to it, and they may not be able to prevent you from using it.

      Basically, you really need to figure out what the beta has done, get an attorney to help you charactarize it, and then figure out what to do from there. Without looking at the specifics, no one here can give you the kind of advice you need.
  • IANAL, If you didn't get have an NDA signed in advance, your basically screwed.

    David Corbin
  • I might get flamed, but actually Microsoft's contract for their beta testers (the "real" testers, not Joe Schmoe who bought the beta 'cause he heard it was cool) is pretty thorough.

  • Ideas are (almost) Worthless (Score:4, Insightful)

    by iansmith ( 444117 ) on Tuesday February 05, 2002 @01:39PM (#2956340) Homepage
    I don't know about the legal issues, but from long experience in programming and knowing writers and other artists, an idea is only 1% of what is needed for any kind of product. The other 99% is a person or group with the skills and drive to make it a reality.

    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)

      by ackthpt ( 218170 ) on Tuesday February 05, 2002 @02:02PM (#2956574) Homepage Journal
      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?

      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.

    • I strongly disagree. Ideas are the seeds that spark the flames of product development. Without a good, original idea - you have nothing.

      Also, I challenge your assertion that "everyone has an idea for a great game, TV show or book".
      Do they really? I don't! Seriously, if I came up with a good idea for one of these things, I'd be a fool not to pursue it. The fact is, most things have been done already. Look at the new game shows on television. One person comes up with a good concept, and then you have 20 copycat shows for the next 5 years until everyone's completely tired of it. If it's so easy to come up with original ideas for these things, why can't anyone do it who works in that industry?
      • They can, and do on a regular basis. However, the demands of the industry are such that it's easier, and more cost effective to implement something someone has allready done succesfully to cash in on it's value. Most original concepts are squashed as a result of cost, and what the decision makers think the public should see, do, taste, touch, or hear.

      • Here's an idea worth literally billions of dollars -- and I'm deadly serious. Feel free to use it if you wish.

        Create a 100% compatible clone of Windows.

        I guarantee if you pull it off, you will get an instant 10% of the market. If you're smart, you'll be able to grow it from there.

        And there you go! A great idea. But there's that little thing about implementing the idea.

        I can give you dozens of good ideas. But there is a lot of truth in, "if it were easy, everyone would do it".

    • This is one of the reasons behind copyright having a limited term. Numerous ideas from the commons are used by people when they create a copyrighted work. Thus, after the term is up, that work is returned to the commons. Well, in theory, but don't get me started on the Mickey Mouse Protection Act.

      Anyhow, their ideas are valuable and they will get the same fruit of their efforts that the rest of society gets when your copyright expires. Unless you expressed that they would get some greater interest in it, I don't think they have any room to suggest some ownership.

    • you got it backwards (Score:5, Informative)

      by markj02 ( 544487 ) on Tuesday February 05, 2002 @02:47PM (#2956889)
      There are really three groups you need for a great software product:
      • 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.
      • Customers provide requirements. Designers (by defininition) do the actual design. A customer may say "hey, this widget sucks, I'd find it much easier to use that one", but that's just redefining (or clarifying) their requirements. It's up to the designer to figure out how to make it work within the context of the rest of the system.
    • One of my favorite quotes is from Samuel R Delaney, the SF writer. I don't recall it exactly, but it deals with this issue. He talks of people suggesting story ideas to him and feeling they should share credit. He felt it was like saying to a boxer, "I've got a great idea of somebody you should fight" then expecting to share in the purse.

      The idea is just about worthless. It's the execution of the idea that has value.

      Igor
  • While you may not have protected yourself sufficiently from them exposing the details of your software, they certainly don't have a claim for IP rights. That would mean that everyone who sent in a complaint to customer service at M$ would be a shareholder by now.
  • IANAL, but they are beta-TESTERS, they test the product, they have no need to look at the code. They are there for primarily the purpose of testing, if they had written code it could be debated, but how can they claim that they deserve to have the source, when they havent done anything but ran software your company created?
  • I've worked with some companies that had beta testers, but for a closed system (B2B) not shrink wrapped software. No one ever brought this up, but I'm not surprised. It's such a hot topic and so many people want to make a buck the easy way.

    They may have an argument if they contributed a idea with substantial information about how to implement it. However, this might be hard to prove. If they suggested a feature and you implemented it without their assistance, I wouldn't think that they have any rights.

    IMHO, the best bet would to have some sort of NDA that included a disclaimer of IP rights.

  • Contracts rule in this one (Score:3, Informative)

    by Kamel Jockey ( 409856 ) on Tuesday February 05, 2002 @01:40PM (#2956350) Homepage

    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.

  • Copyright Law (Score:2, Insightful)

    by Anonymous Coward
    Well, under copyright law the copyright protections go to the author of the work under the law, automatically, unless there's some other agreement that supercedes it (like you working on a contract for another person). So if there's no agreement, and they're using software you wrote, they have no case. Rather, they have no intellectual property rights to it simply through providing you with a consulting service.

    However, if they have a license to practise consulting, it's possible they could sue you for consulting fees, but that's got nothing to do with ownership of the software. The law says if you write it, it's yours automatically.

    • Re:Copyright Law (Score:5, Insightful)

      by Negadecimal ( 78403 ) on Tuesday February 05, 2002 @01:50PM (#2956452)
      The law says if you write it, it's yours automatically.

      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)

    by Anonymvs Cowardvs ( 253637 ) on Tuesday February 05, 2002 @01:43PM (#2956384)
    We are not lawyers. What on earth goes through someone's mind when they go "Hm, my company has a legal problem, I should go ask slashdot!"?

    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.
    • This is very true, except what makes you think this might not be a topic worthy of some discussion amongst a computer and technology-savvy crowd?

      I'm sure this guy is going to get a lawyer, if the issue can't be resolved through discussion with the other party. It's not a matter of people printing out Slashdot commentary and dragging it into the courtroom, as though it's legally binding.

      He, quite simply, just wants to tell us about his problem and invite some discussion. Maybe gain some insight into what other people's results were if they had a similar sitation happen and already spent money on lawyers....

    • But we have knowledge of what's usual and customar (Score:4, Insightful)

      by coyote-san ( 38515 ) on Tuesday February 05, 2002 @02:23PM (#2956743)
      We're (mostly) not lawyers, but we DO have an idea of what's usual and customary in this field.

      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.)
    • There's more to it than purely the legal aspect.

      I think the question isn't "do we have a legal leg to stand on", it's "are we out of sync with the popular perception of what beta testers get?"

      It's both a business relations and ethics question.

      If your business gets a rep for being stingier than everyone else with their betatesters, you won't find anyone willing to go through the pain.

      If it's a flat out unethical thing to do, but still within the law, you have a PR nightmare, and are in need of a personal values check.

      I think for both of those, asking Slashdot is a decent method for finding out what the geek in the street (or at least, the geek on /.) thinks.
    • Doesn't that make me a legal expert?

      I love saying that. It makes the Lawyers cringe. Kind of like saying I watched a lot of "The Lone Gunmen" and that should make me a expert on computers. "They've compromised our cookie!" heh heh heh...

    • Yeah! Put more ambulances at the bottom of that cliff people keep walking off! Good idea! The legal industry isn't large enough!

      Seriously, of course he should involve a lawyer (or two or three .. ), but trying illegitamize a request for the social 'climate' of particular situations is just plain stupid.

      Laws, and IP protection laws (shit, man, Intellectual Property is still a very new term, even since the industrial revolution) are meant to reflect the wants of a society, not the economy (since this really is all about money). We've gotten things so backwards (society and it's laws bends to the economy) in the last 50 years, in part thanks to attitudes like yours: "Ask the experts! Entrench those professions! What would we do without their guiding light?!"

      Obviously, when push comes to shove, he'll be dealing with the law, but there's nothing wrong with finding out if what the law wants and what developers in his situation want are as diametrically opposed as I suspect they are. It's only once we /all/ figure out that everyone's in the same boat will we amass, organize, and push back ...

      You need to understand that at some point, the economy and the legal system will be 'checked' back to the point where it serves a society and social laws. Today, and particularly since the late 70s, we've really been forcing society to cater to the wants of the economy and it's backing legal system. This is just another case where even if none of us are lawyers, if we think the beta-testers shouldn't see a dime (assuming we have a clear enough understanding of what their involvement is in the process), then the laws should reflect that, not the other way around.

  • Get A Lawyer (Score:2, Informative)

    by Shabazz ( 29233 )
    If you're company intends to be an ongoing business they must retain a law firm. This is a question for Ask Lawyer, not Ask Slashdot.

    Not that I'm trying to be a jerk or anything. I just don't think when you are dragged in to court that having asked the slashdot crowd what to do will be of much help to you.

  • As a software developer myself... (Score:5, Insightful)

    by Jason Levine ( 196982 ) on Tuesday February 05, 2002 @01:44PM (#2956395) Homepage
    I'd say they (the beta testers) don't own any portion of the IP rights. If a beta tester points out that doing X, Y, and Z will cause a crash, they're simply giving you feedback about your product. You're the one who comes up with a solution on how to fix it. Even if they give a way to fix it, they don't own the IP rights to that method. This is assuming that you control the source code 100%. If the code is freely available, someone submits some patched code, and you use it then all bets are off. To be on the safe side, you should probably have a disclaimer somewhere on the beta test site that states that all submissions become your property. Just to be on the safe side. (I tend to beta test my programs with a group of technically adept friends of mine, so I've never run into this. They're unlikely to demand rights to my program, they're just happy that I continue to develop it.)
    • Last I checked, if someone patches my (source freely available) code, they've created a derived work, and I retain the copyright. Assuming that their patch can't stand alone as a separate work, it's legally mine.
    • My guess is the situation is not bug fixes but feature requests. For example, if I suggested to Everquest as part of a beta program that item creation when mobs regen be based on the people around the mob creation location (to reduce farming), would I have IP rights to that idea? My personal belief is that I did until I handed that suggestion over to Verant (or whoever makes Everquest) "apparently" with my IP rights to it.


      Imagine if someone suggested a new way to look at movies that resulted in a much better compression algorithm. Who owns the compression technique? One had the idea, one developed it to completion, so they both contributed to it intellectually.


      Regardless, this should be discussed in a beta agreement.

    • I've beta tested many time, and my contribution has gone far, far beyond "XYZ causes a crash". Your job isn't just to break the software, it's to give feedback, (G)UI approaches, suggestions, crazy ideas, in fact everything that happens in the app company before they actually started development. I've never even dreamt about trying to claim ownership over any of those ideas I contributed(many of which I've seen come to light), probably just because I'm not a major asshole like the beta tester that spawned this thread. Oh, I also had to sign a contract too :), but frankly most of it relates to my not revealing product information during the process.

      As has been already mentioned:

      ideas are not product, and
      GET A LAWYER!

      DT

  • call a lawyer (Score:5, Informative)

    by Lord Omlette ( 124579 ) on Tuesday February 05, 2002 @01:44PM (#2956397) Homepage
    Call a lawyer. Just do it. If you don't have a lawyer, what are you doing in charge of a company? How could you have started beta testing without an EULA? This clearly isn't free software, otherwise you wouldn't have to 'beta test' it, you'd just release, revise, repeat.

    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.
    • I am so sick of people who think we should consult a lawyer about every little thing. "You say you want to go to the bathroom now? That is a very serious decision, with legal ramifications your puny little mind cannot possibly comprehend. You better ask a lawyer..." I cannot help suspect that many of the people who spout these opinions so frequently on slashdot are in fact lawyers themselves, trying desperately to increase our already dangerous over-reliance on their services.

      My advice is, if you have a contract with these people, read the rules of the contract and obey them, whatever they may be. If you did not have a contract, or if they are asking for something that is clearly not specified in the contract, you don't owe them squat. I am not a lawyer, but I don't need to be a lawyer to tell you something this simple.

  • Obvious answer (Score:4, Insightful)

    by gmhowell ( 26755 ) <gmhowell@gmail.com> on Tuesday February 05, 2002 @01:44PM (#2956399) Homepage Journal
    What did you say in the licensing agreement?

    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.)
  • IANAL, but you can't just "lay claim" to intellectual property. You have to prove that you and no one else thought of the idea, then go through proper channels to protect it. If the beta-testers get a patent on an idea they suggest, then clearly they own it. Otherwise, anything they tell you is free game until it's protected by law.

  • Tell them to lay off the bad drugs (Score:5, Insightful)

    by Mendax Veritas ( 100454 ) on Tuesday February 05, 2002 @01:45PM (#2956412) Homepage
    As usual, IANAL, but I think your clients are completely out to lunch unless they made some really significant contributions to your product and had a contract with you that stipulated that should have such rights. I agree completely with your view: they're getting your services for free, tailored to their needs, and that's more than enough.

    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)

    by sethg ( 15187 ) on Tuesday February 05, 2002 @01:46PM (#2956417) Homepage
    Trademarks obviously don't apply in this case.

    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)

    by perlchimp ( 263475 ) on Tuesday February 05, 2002 @01:46PM (#2956422)
    We just started beta testing our product. Our beta testers have to sign a 15 page document that states, among other things, that they do not own the rights to any features or improvements they suggest. Of course signing any sort of agreement is disincintive so we offer our product free to them once we release.

  • Enough historical precedent (Score:4, Insightful)

    by PhotoGuy ( 189467 ) on Tuesday February 05, 2002 @01:47PM (#2956426) Homepage
    Even if you never had a beta-tester contract with them (which would have been a good idea), I think there's enough historical precedent about the role of a beta tester that you're on pretty good ground.

    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
  • Are you saying your contract with these beta-clients didn't deal with this issue? The company I work for has been in the exact same situation; we made damn sure the issue was dealt with in advance, in the contract.

    I suspect you might be lucky in this case though; even without a contract I don't see how they would be able to successfully argue that they own part of the IP.

  • Traditionally (Score:2, Funny)

    by eples ( 239989 )

    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?

    What we've traditionally done: they jointly own the code. We retain the right to resell it, they do not.

    Yes - it's basically honor system, but that's how it's done! It may not even be legal, but IANAL.

  • If you're my beta tester you are working for ME. (Score:4, Informative)

    by blueskyred ( 104505 ) on Tuesday February 05, 2002 @01:56PM (#2956524) Homepage
    My company, Blue Sky Red Design, puts things into beta test before trying to shop them to major publishers. Everyone involved in the process signs something to the effect of "I, the undersigned, own no moral rights in -ProjectName-". There are clauses in there about the fact that any idea the beta testers come up with even remotely related to the game or software become my property.

    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.

    • Well send me a beta, I guarantee you that any idea I have even remotely related the the game will still be my IP. I don't begrudge you the right to attempt to protect your product, but lawyers routinely try to create agreements that have more power than they are allowed. Believe it or not just signing an agreement does not make you 100% liable for every last term in it. There are many things that signed or not there are things that are just not legally binding in a contract.
    • If you're my beta tester you are working for ME
      They sure as hell are not. For someone to work for you, you have to be giving them something. That contract is just a load of crap your lawyers wrote so they could harass people -- harassment being a lawyer's strongest weapon.

      If those people really were working for you, there would be a tremendous number of legal and tax implications. Even in the case of something casual like a beta test -- especially if you present it with such uncasual contractual terms. You can't have it both ways, and I know you aren't filing 1099's on those people, giving a monetary value to your bartered transaction, or otherwise living up to your duties when receiving hired work.

      Well, actually you can have it any way you want when you only expect use the law to bully individuals, which is all I expect that contract could ever be used for.

  • At my former employer:


    1. Beta license is different from product license and specifically addresses this issue. Testers do not get any IP rights. And among other stuff: License terminates at end of beta program. Beta issues need their own license terms -- look into it.


    2. Customers that "need" to own IP rights more than they need to beta the product so that they can influence it through their feedback do not need to be part of the beta program. Find other testers. Smile benignly and tell them when the full product will be available, and of course thank them for their business.

  • Federal Copyright Law has some fall back provisions which come into play absent a written expression. Regardless, you:
    1) should have a written agreement that covers this issue and
    2) you should not accept copyrightable contributions from third parties without a written agreement.
  • One peace of advice from someone that got himself in so much trouble, so many times.
    NEVER, and I repeat, NEVER do anything without a lawyer by your side.
    Never sign a contract (my lawyer analysed by Cable access contract, and saved me a lot of trouble).
    And Never, trice never, give access to your property.
    You see, once they got access to the stuff without any restrictive clause, they can ask and even, if they have a good lawyer, gain the rights to part of the IP.
    Always have contracts. Be it in the form of a software license (I use GPL, so I don't have problems with IP), or any other form you like.
    And yes, they have the right to ask for a pice of the cake. But if they will get it, thats another matter entirely. But they can have a case agains you, and even if they don't win, they will cause you much trouble.
    When dealing with lawyer, always remember that if you don't use them to be on the safe side, you will have to use them on the sorry side.
    And yes, IANAL either. But lawyers saved my butt so many times, and I have to shamefully grant that I came to respect them.

  • Standard Clause and Patents (Score:3, Informative)

    by ClarkEvans ( 102211 ) on Tuesday February 05, 2002 @02:12PM (#2956652) Homepage
    Ok. Two things: First, it is standard procedure to put in a clause of your click-wrap agreement that says that all suggestions, improvements, etc. are owned by the software developer. See the Microsoft EULA for details.

    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

  • IANL (Score:2)

    by Alomex ( 148003 )


    IANL, but .

  • Offer to license your code back to them (Score:3, Insightful)

    by duffbeer703 ( 177751 ) on Tuesday February 05, 2002 @02:13PM (#2956660)
    If they'd like to own the whole software package, license the whole thing back to them at a healthy rate.

    Redevelop the portions of software that they developed code to and write a EULA next time.
  • I was beta testing a piece of equipment. Made an off the cuff remark about another (not thought of) use for it with a minor modification. The company did it, and made a fortune with it. THEN they had the balls to demand the prototype back (but I could get a finished one..at regular price of course!). I didn't bite.... I think if a beta tester does or suggests something that adds a significant value to the product, they should be compensated in some way. Otherwise, the company is stealing....
    • The beta tester should only be compensated if that is the agreement made beforehand. Now, in your case, I think it would be worth the good will to have let you keep the prototype (at least...), but unless you signed some kind of agreement with them that they would compensate you for any significant improvements you made to their device then they really don't owe you anything.

      And no, it's not stealing. If you give something away to someone, that someone is not stealing from you unless you both agreed beforehand that you would be compensated for whatever you gave to him or her.

  • IANL (Score:2)

    by Alomex ( 148003 )
    IANL, but [insert random opinion here].

  • The slashdot precedent (Score:5, Funny)

    by Anixamander ( 448308 ) on Tuesday February 05, 2002 @02:23PM (#2956742) Journal
    "You see your honor, according to slashdot comments modded to 3 and above, 98% of posters believe the plantiff has no rights to our intellectual property. The other 2% believed this was somehow related to a beowolf cluster of Natalie Portmans."
  • You want a lawyer that specializes in - - IP law - -.

    I can recommend one that I have used once (I have no financial interest in this firm) in looking into patent issues.

    I used Woodbridge Associates in Princeton, NJ. (There is contact info. at : http://www.njiplaw.com/
    )

    My guess is that they have no claim. Unless you and they signed agreements transferring rights to them. But, you need a lawyer...

    Sam Nitzberg
    sam@iamsam.com
    http://www.iamsam.com

  • IP (Score:2, Informative)

    by John Kelvie ( 515281 )
    I think that there are some good points made here, but I feel that a interesting aspect of this situation is being ignored. We seem to be focused largely on the legal aspects of the situation and what exactly constitutes IP. These are important considerations, but another aspect (or at least the one I am more accustomed to dealing with) is how IP contributions are a part of the negotiated price that a product is sold for.

    For example, we developed a product for a customer during which they made significant contributions to the feature set that was included in the product. There were of course differences as to what the degree of their contributions were(they of course felt it was larger than we did, and vice versa), but there was certainly no attempt to deny on our part that their contribution had been significant. Of course, we argue this to them as an advantage of what we did: you get a product that is customized to your needs, so why should you pay any less for it, etc. Their retort is that they made it a better product not just for themselves, but for our other customers as well.

    I believe this was a valid point on their part, and their desire to realize something for this contribution seemed fair to me. What it ended up being was essentially a discount off of what the cost of the product was. The particulars of what the exact discount was, were, of course, contested, but everyone agreed on the principle behind it.

    So, I don't know about the legal particulars of any of this(except of course for the contractual ones that were negotiated), but it seems to me that whatever the law says, if the customer has made your product a better one, then it is not unreasonable on their part to demand something in return. At the same time, this is just one small piece in the negotiations puzzle. We for example were more willing to recognize their contributions since being a small company with few customers, they had a greater degree of leverage over us than say if they were dealing with Oracle. In that situation, the most you might ask for is that they implement your suggestion and don't raise your prices.

    Any thoughts on this? Similar situations?

    John
  • I had a similar question a while back....

    If I find a bug in some software and report it back to company which created it, doesn't that make me an employee of the company which created the software? Am I entitled to compensation?

    And if not, why should I waste my time reporting bugs?

    • why should I waste my time reporting bugs?

      Because you want the bugs to be fixed. You presumably already like the product enough to want to use it. What more do you want, a bounty?

    • You're not entitled to anything if you volunteer information. You're not an employee (not even an independent contractor) unless an individual or company explicitly agrees to compensate you for your services.

      If you think you're wasting your time and not getting anything in return for it (better-quality software, or the satisfaction of helping other people also affected by the bug), then don't do it!

  • This is the sort of thing that should be handled in the NDA and other paperwork you have beta-testers sign.
  • This [weyrich.com] is a great book and should be read by any programmer who attempts to sell their software. From the website: Abstract: How to protect software intellectual property, including copyrights, trademarks, patents, trade secrets, and more. Includes discussion of issues relating to the Internet and diskette with over 50 ready-to-print legal documents.
  • Our standard contract includes clauses where the other party acknowledges that the project is not a work for hire and that the work would have been more expensive had it been a work for hire.

    The contract grants them a license to use the software (plus any additional rights granted, sometimes a BSDL style license, etc.). We then use statements of work that are attached to the master services agreement that adds additional work and licensing information.

    Ethically/Morally, they have no claim to your work. However, I understand why they wouldn't want their ideas to go to competitors. You should discuss this stuff up front.

    Legally? You aren't employees, and it isn't a work for hire unless stated so.

    Ideas can't be owned. Methods can be patented, and expressions copyrighted. However, nobody owns an idea.

    Consult a lawyer, and find more ethical clients.

    Everyone's clients will try to bully them. One of the tricks to keeping a startup alive is to know when you need to suck it up and when you don't.

    Alex
  • Ok, solving this problem is a 4 part process:

    1) Hire an intellectual property lawyer to tell them in precise legal terms how to shove it up their posterior regions.

    2) Get said lawyer to draw up an agreement to use with all of your current and beta testers that makes them explicitly grant you rights to all of their future comments and suggestions about the product, so this doesn't happen again. You then make them all sign it or take away their beta copy and drop them from the beta program.

    3) Make all of your clients *pay* for all future beta versions. It doesn't matter *what* they pay, you can charge them a dollar, but make them pay for it. They have a harder time claiming that you're getting something from them when they're provably paying you for the privilige.

    4) Dump the client who's trying to claim they own your stuff. Never do business with them again. Do not sell them any future versions of your products. With friends like that, who needs enemies? If you absolutely have to give them tech support, give them the bare legal minimum you have to for only as long as your contract with them requires. Once you're done with every single obligation to them, tell them you're dropping them as a client so they know not to bother you any more.
  • Assuming that customer is right, which they're not, then the vendor should get a cut of increased net profit resulting from the use of the software. Ask them what they think of that.

    I've worked as a vendor, and as a consumer for a large hospital. The beta-testing is a symbiotic relationship. The user gets free, advanced release software and the ability to offer input on product development, and the vendor gets testing by real users in real situations, thereby increasing product quality, which is what both groups want.

    At my current job, we are effectively a beta tester. We pay for the software, but we get it first, they listen to our input, and we get preferential treatment. That they listen to our input is obvious from the latest product release. During the implementation of this product, we found where there was A LOT of waste and undercharging for our services occurring. Does the vendor get a cut of those savings? Hell no!
  • The copyright laws do not protect ideas; they only protect the tangible expressions of ideas. That's one of the reasons why Windows looks so much like the MacOS. Microsoft is perfectly free to use Apple's design ideas, but it cannot copy Apple's code and must write its own.

    If your beta testers give you ideas for improvements and point out bugs, they have no rights under the copyright laws to the ideas they have passed on to you, although they may have rights to the particular mail or email they wrote to communicate their ideas. So long as you and your company write the actual code to implement their ideas, you and your company own the code, and those who furnish the ideas do not. On the other hand, if your beta testers furnish you with actual code and they are not employees of the company, they own the copyright in whatever it is that they wrote.

    One other area of protection involves trade secrets. Generally, if you consider designs, algorithms, source code, and the like to be confidential and a trade secret, you should not disclose it, to beta testers or anyone else, without a Nondisclosure Agreement. If you fail to treat that information as confidential, your trade secret protection may be forfeited.

    The suggestion that countless earler posts have made, that you consult a lawyer and have some sort of agreement spelling this all out, is a good one. Although the copyright laws are pretty clear on these issues, it would have been helpful to have an agreement in place that spells it all out for your testers.

  • Absolute answer (Score:2, Informative)

    by David Thompson ( 218990 )
    Instead of wasting your time with a bunch of techie's opinions go see a lawyer and get an expert opinion - This is a legal issue after all.

  • Inventorship and IP rights (Score:5, Informative)

    by Compulawyer ( 318018 ) on Tuesday February 05, 2002 @02:47PM (#2956888)
    DISCLAIMER: THIS IS NOT LEGAL ADVICE AND DOES NOT CREATE AN ATTORNEY-CLEINT RELATIONSHIP. IF YOU HAVE QUESTIONS REGARDING YOUR SPECIFIC RIGHTS, SEEK THE ADVICE OF A COMPETENT ATTORNEY WHO REPRESENTS YOU. THE FOLLOWING MERELY CONVEYS INFORMATION ABOUT THE LAW AND SHOULD NOT BE RELIED UPON AS GUIDANCE OR ADVICE TO FOLLOW IN A SPECIFIC INSTANCE. THIS STATEMENT IS MERELY INTENDED TO CONVEY INFORMATION GENERALLY.

    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.

  • Legally, if your beta test agreements are worth anything, your customers don't have a leg to stand on. Practically, your testers and customers are right: their feedback and their ideas is what gives your product much of its value in the long run.

    In fact, one of the big annoyances with commercial software (this includes Windows, Qt, etc.) is that they are harvesting lots of ideas from their customers and making money from it: customers end up paying for their own work. That's why it is important that people use free software and write bug reports and suggestions for enhancements: that way, the value of using software goes back to the users themselves, rather than to some business.

  • I dealt with this at work in December (Score:5, Informative)

    by Anthony Boyd ( 242971 ) on Tuesday February 05, 2002 @03:03PM (#2957041) Homepage

    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.

  • Yes, it happens often (Score:2, Insightful)

    by MrIcee ( 550834 )
    I can't begin to tell you how many times something like this occurs. Companies who are helping to beta a program often sue over patent rights, claiming that their suggestions are in the code.

    None of this stands up... ESPECIALLY if there is no contract. Often what we do is reward the beta tester with free/lower cost services... but we NEVER NEVER allow them rights to the software.

    If you find this happening to you often, I suggest a simple non-disclosure agreement that must be signed before they can beta test. The agreement should spell out that (A) they can not disclose anything about the software and (B) beta testing does not give them any rights of ownership.

    I'd also terminate the relationship with the company who is pursuing you, immediatly... and do not allow them back into your beta program.

  • work-for-hire (Score:3, Interesting)

    by Kallahar ( 227430 ) <kallahar@quickwired.com> on Tuesday February 05, 2002 @03:27PM (#2957242) Homepage
    If you're hiring them to test your product, then any work they do is considered work-for-hire, and is thus owned by your company. (similar to RIAA and it's artists - http://www.wallacecollins.com/workforhire.html)

    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.
  • You really should be talking to an attorney, not the Slashdot audience. Your beta tester is full of shit on legal grounds, he's just plain out of luck, doesn't even have a legal peanut to stand on. But that's neither here nor there. You need to hear this from an attorney.

    C//
  • IANSWIAALON, I Am Not Saying Wether I Am A Laywer Or Not. All these disclaimers are starting to piss me off. Of course we are not lawyers here, lawyers have a life and don't post on /.

    Now, I'm sure the person understands that (s)he should contact a lawyer, but in the meantime, some feedback from the industry never hurts. In fact I'm also sick and tired that everything has to be settled through lawyers these days. You'd think some common sense would go a long way.

    Some things that may help you persuade them to get there heads out of their asses:

    First of all, ask them what they consider Intellectual Property in the first place. In fact only very few things fall under IP.

    One of the things that does is code (software). However, code falls under normal copyright law, and as such the copyright is by default (so unless you contractually signed it over) owned by the person, or company, that wrote it. Generally beta-testers do not contribute to the code, so they own no rights to it.

    Providing an idea/suggestion or finding a bug has nothing to do with this. In fact, even if they patented the idea they provided, they have NO right to the code. You could have to pay them royalties, but that's a different issue.

    Patents are also IP, and if you patented something that was their idea, well, yeah, then you may have a problem. The thing is though that a patent is by definition public, so the only rights you'd be talking about are monetary.

    Ideas ARE worth something. I keep a book of which the pages are numbered, and if I have any ideas I described them in there. I let someone read the book and sign off on it, every once in a while. The reason for doing this is twofold, but boils down to 'prior-art'. If ever someone patents an idea that I had before, I can prove I have prior-art. Also, because I deal with a lot of source code from third parties, if they ever claim copyright infringement, I can prove I had these ideas before I saw their source.

    Basically, they can do with the ideas they provided whatever they want. As a joke you could pull out all the lines of code (although, again, I don't think they have rights to it) that where based on their input (but nothing else). And present that to them. See how useful that is. ;o)
  • I'm surprised that you'd ask the slashdot community. They might GPL their responses and that could work it's way into your code...
  • I've had limited exposure at my job to a US Federal Program Called a Small Business Initiative (SBI). This program allows the Federal Government to fund a private company to help make it's product, preferably for government use. The Government is the target user and supplies both money and usually assistance. When the product is complete, the small business retains the copyright, patent, and trademarks, and the government still has to buy the product.

    The whole point of the program is get much needed items and software developed that don't currently exist. This isn't exactly your situation, but it provides a precedent of how a customer supplying a lot of resources does not own any rights to the product.
  • The software industry need to pull it head out of it's ass and give credit
    where it is genuinely deserved.

    When you have an industry asking the consumers "where do you want to go
    today?" What is really being said is that we of the computer industry have
    our head up our ass so bad that when don't know what to do next and we
    want you to tell us in this poll that only we will see the results of (IE>
    MS vs. DOJ - no more public information via the media, once the public
    comments have been entered....)

    And what we in the computer industry are going to do with the result is to
    turn around and tell you that you are stupid and we are smart as we then
    empliment what you told us to but as though it our genuis.

    It is out complete intent to abuse the fuck out of the consumers and to
    entrap them into our game of taking from the consumer everything we can,
    for free....unless we can do an MS and even get them dumb funking user to
    pay us for their ideas and our bugs.

    The computer industry doesn't own anything of any value that they didn't
    steal from someone else.

    And to insure the competition stays cntrolled, keep the software
    production tools really really stupid.....

    Programming is the act of automating complexity that is made up of simpler
    things. It is done so in order to make repeatable use easy for the user.

    Interesting how the Software industry can't seem to automate their own
    field but can automate any other.

    The computer industry is a very Consumer Entrapment Abusive industry and
    it is made up of those who practice the art of abstraction manipulation.
    Not at all unlike the profession of laywers, which explains why they seem
    to get along so damn well with that profession.

    But all of this is going to change, as a genuine science of software
    states that auto-coding, the automation of code generation, is very
    possible and has been for a long time. It's only just been avoided, due to
    what can be summed up as job security.

  • There is a clear legal answer on these facts . . . (Score:3, Insightful)

    by werdna ( 39029 ) on Tuesday February 05, 2002 @11:01PM (#2959816) Journal
    It depends. Call a lawyer.

    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.

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