back to article UK dev loses ownership claim on forensic software he said he wrote in spare time and licensed to employer

A British developer has lost his fight to claim ownership over software he wrote while working for digital forensics firm MD5. Michael Penhallurick claimed he had worked on the “virtual forensic computing" (VFC) software at home and in his free time while being employed by MD5, and that he retained copyright ownership over the …

  1. Joe W Silver badge

    "Which should be a salutary lesson to all software developers: if you're working on a personal project, check your employment contract and employee rights to ensure your work doesn't ultimately belong to your boss."

    RTF... Contract.

    Seriously. And the agreements you signed on the side. I actually contacted legal of the new employer before signing. Fortunately I'm mostly doing development on 1) code that is not interesting to most, there's maybe five people in the world using it 2) was largely developed in a previous job before I signed up with this company and 3) has always been licensed under the GPL. Legal agreed that they now know about this, and are ok with it, still got the email archived.

    Any (completely) new (I guess commercially viable, I'm not running any old Lego Mindstorms program past them, when I finally buy one) project, even if I develop it in my spare time, would need to be run past the company, who could call dibbs on it and claim it as their property. Again, I signed up to this, knowing and accepting it, and they know that I do FOSS stuff, which they cannot claim as their own.

    1. getHandle

      Isn't that what the "productive weekend" you have right after your last day of employment is for??

      1. WhereAmI?
        Unhappy

        Talking of 'productive weekends' and slightly off the IT angle (although I was in IT at the time); many, many moons ago, in addition to the day job, I also regularly contributed to most of the monthly motorcycle magazines that were on sale at the time. As per contract, I reported this and HR actually agreed that perhaps my part-time journalism didn't impinge on my day job and I didn't need to worry about it.

        On a good weekend I could earn more in one afternoon's writing than I got for five days' work at said employer. Trouble was, it wasn't guaranteed income... but it was really nice pocket-money and I got to ride some fantastic machinery that I wouldn't have gotten anywhere near under ordinary circumstances!

        1. Anonymous Coward
          Anonymous Coward

          Back in the 1960s we had to ask our IT employer's permission to do any other work - even a part-time bar job. Some decades later they modified the T&Cs to require permission only for things related to the company's area of interest.

  2. Anonymous Coward
    Anonymous Coward

    No evidence of a license

    "Crucially, although Penhallurick insisted he had licensed his software to MD5, it emerged during the case's proceedings that no evidence of such a license agreement existed"

    Yep, crucial.

    1. tfewster
      Facepalm

      Re: No evidence of a license

      "...was paying Penhallurick a salary and cut of sales in payment"

      "Penhallurick resigned in 2016... in January 2018 ... MD5 stopped paying him for the code."

      That looks like evidence of some sort of agreement at one time. Though maybe not what you would call a "licence" agrement

      1. Ben Tasker

        Re: No evidence of a license

        You could just as easily position it (as they have) as that cut of the sales being a performance related bonus/sales commission.

        There are various reasons it might be paid other than being royalties.

        For me, the cut-and-shut bit of this is the flow of events described in the article:

        - He talked to MD5 about his technique for forensic examination

        - He was hired and agreed to try and automate the process

        - He proceeded to do so

        He was hired to write this software. That he messed about with it in his spare time doesn't change the fact what he was doing was the job he was being paid to do. He was working as an employee and created the work "for hire".

        It's really not quite the same thing as him having started a fun project in his free time and his employer having gone "nah, that's mine".

        There was clearly quite a lot of naivety on both sides though. I've sold software to work in the past - the agreement is _very_ clear about what the sale/agreement is and what the responsibilities of each party are.

  3. sgp

    A smart man but not a wise one.

  4. john.jones.name
    Stop

    teach them how to use dd

    anyone can create a clone from a device using dd

    I would hope that most forensics teams would know and use dd rather than some commercial toolset that would be trivial to subvert with a aggrieved principle author...

    the mind boggles

    1. Danny 5

      Re: teach them how to use dd

      If you think DD works on every and all devices with storage, I have some bad news for you.

      1. sev.monster Bronze badge
        Devil

        Re: teach them how to use dd

        Everything uses SATA, even non-reprogrammable flash memory! dd all the things!

    2. Anonymous Coward
      Anonymous Coward

      Re: teach them how to use dd

      It would appear you neither understand forensics or the tool in question.

      DD is a capable piece of imaging software and is capable of producing forensic quality images. VFC is a tool that allows you to turn a forensic image into a working VMWare machine. It does this whilst maintaining the integrity of the image.

  5. happy but not clappy

    British Law is pretty vicious on this

    Most contracts have an IP "duration" clause that basically means there is no such thing in law as "spare time". If you built anything of any interest during the period you were employed, then your employer can claim it is theirs and will almost always win in a British court, even if what you created was of only very limited relationship to your day-job e.g. "runs on a computer and makes money".

    Best thing is to ask for an explicit exclusion from those clauses for anything you do in your spare time or risk being sued. For software developers this is a very real likelihood as I understand it.

    1. sgp

      Re: British Law is pretty vicious on this

      Correct, same on the continent actually. I know of employees asking and getting exemptions for developing software in their spare time that was completely unrelated to the business of the company they work for. In this case, that would be hard.

      1. FeepingCreature Bronze badge

        Re: British Law is pretty vicious on this

        Not in Germany, as far as I know. I mean, companies may well try to push for this, but generally 69b (programs written during employment belong to the employer) is limited to programs written "in furtherance of one's (work) tasks or orders of the employer". So while the judgment in this case would indeed have been made the same way, it does not apply to unrelated work, even when made during the period of employment. Avoid writing your private software at work, avoid using it at work, and you should be fine.

        Note: this only applies barring other agreements in your contract.

        1. This post has been deleted by a moderator

    2. Ben Tasker

      Re: British Law is pretty vicious on this

      > Most contracts have an IP "duration" clause that basically means there is no such thing in law as "spare time".

      I routinely ask for these to be removed or changed* when looking at a new job. It does mean being willing to say "sorry, no" and move on though, so not a luxury that can always be afforded.

      *If the clause can be interpreted, in any way, as "we own your shit" then if they're not willing to remove entirely, I'll normally ask for it to change so that it's limited to things directly related to my core responsibilities.

      i.e. if I invent/develop something relating to my role, then I'm using skills/knowledge refined via my employer. If I invent a new way to make gin, then it's none of their business.

      Which seems like a much more reasonable trade-off.

      1. Cederic Silver badge

        Re: British Law is pretty vicious on this

        I take this approach too, and have had no issues with prospective employers.

        One contract didn't limit IP grabs to software. I still have the exemption they granted in writing for my photography.

    3. needmorehare
      Thumb Up

      Just work a "second job"

      If your employer hasn't blocked your ability to do that explicitly in your contract, kindly inform them that you have a second tech job on weekends and then the IP you write on the weekend belongs to your weekend employer, not them. They've accepted that by accepting your second job. Problem sorted.

      In my case, I have no employment contract, so contracting myself to a "small startup" couldn't conflict!

      1. Sykowasp

        Re: Just work a "second job"

        That's great, but many employment contracts for full time jobs will say 'no second jobs' quite reasonably.

        I think getting the exemption in the contract for personal projects not related to their employment performed out of work hours not using company resources is the sensible way to go.

  6. KarMann Silver badge
    WTF?

    You only release once??

    The reality, the judge decided, was… that he created multiple versions of it with improvements and enhancements….

    It says that as though that's relevant and implies that it's an indicator that he was doing this as part of his employment. Do they really think that people doing spare-time development never update their software products?!?

    1. Doctor Syntax Silver badge

      Re: You only release once??

      You're reading a summary of the judge's summary of the evidence. It's possible that those changes were discussed with his employers or the need for them came to light in cases he handled during his employment. Remember two things about judges when reading a case report: they've seen and heard all the evidence and they've got where they are by being smart and experienced.

    2. Cynic_999

      Re: You only release once??

      "

      It says that as though that's relevant and implies that it's an indicator that he was doing this as part of his employment.

      "

      When the updates are on code that your company has been actively using for years, then yes, it is very good evidence that the updates form part of what you are employed to do.

      The default position in the UK AFAIAA is that your employer owns the copyright to everything you create that is connected with the job you are employed to do. It does not have to be something that your employer specifically asked you to do, just connected in some way to what you are employed to work on (whether contractually or because you have done so without objection for some time). Whether you created it during your paid hours or in your spare time is completely irrelevant. This is one of the major differences between working as an employee and working as a contractor. The default position can be changed by clauses in your employment contract.

      Had he been employed by that same company as a cleaner or accountant, he would probably have been able to claim ownership of the copyright even if he had sold the program to them.

  7. Doctor Syntax Silver badge

    "Which should be a salutary lesson to all software developers: if you're working on a personal project, check your employment contract and employee rights to ensure your work doesn't ultimately belong to your boss."

    Check it before you sign it.

    1. PhoenixKebab
      Facepalm

      Previous employer tried to issue me a contract that was not just restricted to software. Any copyrightable work had to be offered to the company for first refusal. The contract looked like a cut/paste/edit job from a generic HR book.

      As a serious amateur photographer I could take a few hundred pictures a week. Every single one of which is immediately copyrightable, even if just a holiday snap. I pointed this out to HR and the contract was amended (before signing).

      The process for submitting your off-time works to the legal team was not geared up for bulk submissions and would have taken up my entire working week, every week.

      1. John Robson Silver badge

        That would have been really funny though - You're paying me, but to fulfil my contract I can't actually do any work...

        1. Claptrap314 Silver badge

          Funny up until evaluation time, that is...

          1. John Robson Silver badge

            The assumption is that it would be spotted well before evaluation time - you'd only need to have one such day, and tell your manager about it, before they would come up with some sort of alternative.

  8. Stuart Castle Silver badge

    I don't do much development now, but I am pretty sure the company I work for retains copyright on anything developed by company employees, using company facilities and on company time. I did used to do a fair amount of development work, both in and out of work, and while I do retain the copyright on anything I've developed on my own facilities in my own time, I consider anything developed during work time to be owned by my employer.

    That said, everything I have developed during work time has been specifically designed for the needs of my employer, so I doubt anyone outside my company would be interested in the software *anyway*. Hell, most of it was developed for specific projects within the company, so isn't even in use within the company anymore.

    1. Version 1.0 Silver badge

      I think this happens a lot, it happened to me too. A lot of people working at a job see issues and have a go at fixing them at home after work ... because the employer will not let you work on fixes during the workday. They tell you to get on with things and quit playing around.

    2. Cynic_999

      "

      ... while I do retain the copyright on anything I've developed on my own facilities in my own time, I consider anything developed during work time to be owned by my employer.

      "

      Unless it is stated in your employment or other contract that your employer waives the right to copyright, AFAIAA the law states that it is immaterial whether the work was done during paid or unpaid time. All that matters is whether the work you did is something that is associated with the work your employer pays you to do (whether it is or is not associated is a matter for a court to decide, but the association can be quite loose). So while you might *consider* that you own the copyright on work you did in your own time, that is not necessarily true in law.

      I recall reading of a case decades ago where a fireman made a better design of nozzle for a fire hose in his home workshop. A court decided that even though he was employed as an ordinary fireman and his duties did not include designing firefighting equipment, his employer owned the IP of the design, because his duties as a fireman is what inspired the design.

  9. Paul Cooper

    Related issue

    In academia, if you work in a University it is usual for people to retain IPR on the work they do, and to take their work with them when they move to another university. This includes data, samples, code and whatever. Of course, a lot of it is published and freely available anyway, but there is always a corpus of work that is not yet published. I don't think this is documented anywhere in particular, but it's the usual way things happen.

    Those who moved from University to a government institution sometimes got a nasty shock when they realized that their research belonged to the institute, NOT to themselves personally. When it came to Freedom of Information and Environmental Information Regulations (the latter was more important in most cases), it made a big difference - the institute could and did instruct them to release data to third parties in compliance with those regulations. Some more recalcitrant members of staff had to be threatened with disciplinary action before they could be made to take it seriously!

    1. Anonymous Coward
      Anonymous Coward

      Re: Related issue

      I was at one UK University where they wanted me to sign something agreeing to give them the rights to whatever code it was. Unfortunately, I completely forgot to sign it, and nobody ever chased me, so it remained unsigned.

      I also have some useful-to-me simulation frankencode, originally borrowed-from/lent-by a fellow grad student, and subsequently worked on in at least three distinct institutions for various reasons, and at times with only somewhat erratic version control. It would be quite hilarious to see the legal mess if any institution *actually* thought they wanted to insist on whatever exclusive rights thought they might have, over whatever bits they thought they might own.

      1. Anonymous Coward
        Anonymous Coward

        Re: Related issue

        Unfortunately, I completely forgot to sign it, and nobody ever chased me, so it remained unsigned.

        I had a similar experience with one of my employers. When I was hired, at a remote location that did not have any on-site HR staff, they mailed me a packet with various materials. There was an employment contract, and there were separate agreements regarding IP and non-compete. I sent back the signed contract, and stuck the other agreements, unsigned, in a file in case anyone brought them up later. No one ever did.

        Would I want to rely on that in court? Probably not, but in some hypothetical circumstances I might have given it a try.

        When I do academic or other personal work, it's entirely on my own time, and on equipment I own. Personal work never touches company equipment or vice versa.

        1. Cynic_999

          Re: Related issue

          "

          When I do academic or other personal work, it's entirely on my own time, and on equipment I own. Personal work never touches company equipment or vice versa.

          "

          Those things are irrelevant. What matters is whether the work you did is associated with the work you are employed to do.

      2. Andy the ex-Brit

        Re: Related issue

        When I joined my company 20+ years ago, we were given packets on our first day with all the paperwork we had to fill out, sign, and bring back the next day. One of my colleagues confided to me that he was not happy with the terms of the non-compete agreement so he just typed up and printed one more to his liking. Nobody in HR of course looked any closer than making sure all the correct pieces of paper were there and signed.

  10. Duffaboy
    FAIL

    Everyone knows that

    Anything you create on company time, belongs to the paymaster (your employer). Well most of us know.

    1. IGotOut Silver badge

      Re: Everyone knows that

      Go back, read article.

      1. doublelayer Silver badge

        Re: Everyone knows that

        That's not really sufficient. He worked on it during his spare time, he claims, and I'm inclined to believe him. The question is whether he did so as part of employment or not. He was a salaried worker being paid by the company to reproduce the software he wrote. At that point, "company time" isn't really how it works anymore. "Company projects" is more like it. For instance, if I work on the projects my company asked for during my spare time, I won't own any of the code; it's still work done on my employer's IP.

        The central question was whether he or the company owns the project, which would probably be settled in a license agreement or employment contract. There was no license agreement, which is what you would need if there was a licensing arrangement. That makes it hard to argue that the code was licensed.

        1. Roland6 Silver badge

          Re: Everyone knows that

          > There was no license agreement

          Additionally, the employee seems not to have demonstrated any commercial activity on their part, for example having an Ltd or website promoting their software and best of all other customers, and evidence that his employer was aware of all this.

  11. ButlerInstitute

    Gardens/Plant Collecting - Journal article

    Not just in software, or obvious creation of IP like photography.

    My wife worked for a while at - well I suppose I shouldn't name it but it's obvious where I mean - a world-renowned garden in West London. One of the staff there had, prior to working there, been on a plant collecting trip to China (probably, that seems to be where most plants of interest come from [*]) and written an article, and submitted it to a learned journal for publication (all before this current employment). However, because it was actually published while he was working at *** Gardens, they had to get the rights to the article. That's the way the contract was. He was quite junior; it may well be that someone more senior might have had more ability to keep the rights.

    I have heard that in academia - undergrads keep their own rights, and they are not taught about IPR, and post-graduates have to sign the rights to the institution and they *are* taught about IPR.

    [*] The other place would be Madagascar.

    1. MrReynolds2U

      Re: Gardens/Plant Collecting - Journal article

      While at University we were advised that any and all IP developed while at University belonged to them.

      1. SImon Hobson Silver badge

        Re: Gardens/Plant Collecting - Journal article

        A LUG I'm involved with used to meet at a university, and was originally set up by some academics. One was bemoaning how difficult it was for academics to work on FOSS because the university claimed that they held the copyright for anything they wrote, whenever or wherever they wrote it. So work on FOSS at home, on your own computer, in your own time - the university owns it all as far as the university was concerned.

  12. senex1970

    A very interesting read. The judge seems to have seen through the fog and reached the obvious conclusion that work done whilst employed normally belongs to the employer. Strange that Penhallurick didn't realize this given the IP clause in his employment contract. How did the case get this far?

  13. Kieran

    Related to the business

    The wording I've seen in various contracts around this often includes something like "...related to the business of the company, *or capable of being used by*".

    That 'or capable of being used by' can essentially include whatever they might choose it to mean: "Sure we're a travel agency today, but we could start selling software tomorrow if we decided we owned some."

    I've always recommended to any devs I've managed that if they're working on something in their own time, they let us know about it so we can get the MD to give them an opt-out in writing saying the company's aware of it, and don't consider it their IP.

    Wouldn't apply in this case, obviously!

  14. Boris the Cockroach Silver badge
    FAIL

    I suspect the

    kiss of death here is that his employer paid him an extra % based on the sales of the software.

    And he got all pissy because they stopped paying him the % when he left...

    1. Roland6 Silver badge

      Re: I suspect the

      >And he got all pissy because they stopped paying him the % when he left...

      In 2016, when he left, they converted it to £5,000 pcm payment for support and update services.

      I find the Judges report (see link in the article) very readable - para.s 102 thru to 111 inclusive, cover the period 2016-2018.

      1. Sykowasp

        Re: I suspect the

        Weird, surely his employment finished once he left.

        That ongoing payment sure sounds like a service one pays for when licensing some software.

        Obviously they must have convinced the judge that this was a contractual development/support role rather than a licensing role.

  15. tentimes

    I'd appeal that

    If I had the money to.

  16. prinox
    Mushroom

    I must have been an exception. Worked for Willis for quite a few years during which I not only calculated "e" to 1,000,000 million digits (before the two Americans did so), but also created a truckload of useful tools. When I left them I asked if I could take copies with me, and was pleasantly surprised by the "We wouldn't be surprised if you had already made copies!" reply.

    But I did at a later stint save them a small fortune by writing the tools (in about half-a-day) we used for the Y2K conversion, after the commercial software turned out to be a crock of crap...

    1. Anonymous Coward
      Anonymous Coward

      Some time after I retired I received an email from the company asking if I could supply a copy of a tool I had written during 20 years - which had been distributed to a few techies. I pointed them at the office colleague who had been bequeathed a small fire-safe and its key. Wherein they would find the last issued version, sources, and compiler install CDs.

  17. J.G.Harston Silver badge

    At a job I needed a Unix fdump command, so wrote one from memory the one I'd written at university a few months earlier. A few years later at another Unix job I needed an fdump command, so again wrote it from memory, this time remembering to make a printout. Some years ago I was using Linux and needed an fdump command, so wrote it again from scratch typing in the printout.

    So, this tool, written entirely by myself, once from whole cloth, twice from memory, in order to just get the damn job done, isn't mine? You're saying that if I use a bit of parcel tape from my bag to seal a box, that parcel tape belongs to my boss, and I can't use it in my next job? Do my pens belong to my boss? Does my car? I read something at work and I have to excise that chunk of memory when I go home? In Job C I learned this neat trick to do long division, when I leave I have to scrub my brain clean, and in Job D work out how to do long division again.

    1. Roland6 Silver badge

      >So, this tool, written entirely by myself, once from whole cloth, twice from memory, in order to just get the damn job done, isn't mine?

      The use of your memory (ie. knowledge and experience) is an important consideration here.

      The version you wrote at Uni, would belong to you, as would any hard copy notes and printouts. So it would count as being part of your personal toolkit.

      The version you wrote (from memory) at the first job effectively belongs to that employer.

      Likewise the version you wrote (from memory) at the second job effectively belongs to that employer.

      Similar considerations apply to third version you wrote from scratch, using your memory.

      However, if you had taken a printout of the version from either the first or second jobs and used that at subsequent jobs, that would be different...

      1. Anonymous Coward
        Anonymous Coward

        The predominant concept this suggests is that you Should hide reserve any personal assets you have creatively, So that your employer does not lawfully steal from you. To hide your capabilities except the minimum necessary.

        Long term lthis is likely to condition a diminishment in quality and increase in avoidable dysfunction.

        After all it doesn't matter what you call it if what you created is taken from you and Claim by others instead of leased by others, you have been punished. Play of stolen credit for the value you represent to the world.

        They now deceived the world into putting faith in that company when that faith should be in the individual The committed the act of creation.

        It's a casually practice form of deception

    2. Cynic_999

      "

      So, this tool, written entirely by myself, once from whole cloth, twice from memory, in order to just get the damn job done, isn't mine?

      "

      That's right. If you wrote it whilst you were employed (either in company time or your own time), and it's something you used in that job, it definitely belongs to your employer (unless excluded in your employment contract). They could even sue you for using it in a different job.

      1. Sykowasp

        This shows the immaturity of employment law regarding services work, including programming.

        Clearly this software is a tool, and it is knowledge/experience - that is why you are being hired. In other jobs, using your own tool or knowledge for a particular piece of work does not transfer the ownership of the tool or knowledge to the employer.

        I also think it is not reasonable to identify all these tools and knowledge up-front in the employment contract - unless the employment is specific to one of those tools or knowledge (in which case ownership of derived works would be clarified in the contract, as would the ownership or prior versions - this kind of applies to this article's situation).

        Now if software developers/engineers could get off their high horse and form a strong union, then matters like this would get resolved in due course.

  18. Jason Hindle

    A perfectly cautionary tale

    I don’t know of any tech company that doesn’t have an “If you make it, it belongs to us” clause, and in most jurisdictions the law supports that. Some are reasonable enough to include an “if it’s related to our business” clarification. So I can write a dating app (because no one else has thought of that bright idea) without my employer making a claim. In any case, always ask yourself if your private shit and and your employer’s shit might intersect if expressed as a Venn Diagram.

    To be clear, I’m choosing not to express an opinion either way here (but feel free to infer). This is not new. Employed tradesmen used to call private work for a bit of pocket money, at the weekend (often using the company’s tools, just like today), as doing a foreigner. Employers didn’t like it then; less so now.

    1. Intractable Potsherd

      Re: A perfectly cautionary tale

      When my dad was in the fire service, I don't think there was a single person on his watch who didn't have a "fiddle job" *. Some laboured at local firms, others were painters and decorators, mechanics, window cleaners, electricians, plumbers. Before the fire brigade strike in the mid-70s, this was necessary to survive - wages were terrible. Afterwards, it became a way of filling in the time (six effective days off out of every eight).

      *For a few years, I actually thought my dad played the violin.

      1. Jason Hindle

        Re: A perfectly cautionary tale

        I think it was the last Labour government that effectively stuffed it for the firemen when they banned work on the side. Apparently, someone who can climb up and down ladders all day, and can carry someone heavier than himself, makes a great roofer and scaffolder. Who'd have thunk that?

  19. Anonymous Coward
    Anonymous Coward

    Housing employee ever to grow up into a business owner

    How are employees supposed to grow out of the child like role to become peers if They are stripped of their value?

    If the majority of citizens are forced by law and it derivative artificial economic circumstance, to remain as if dependent sunservient children, then they should not be held Criminally and financially Liable as an adult would be.

    Employers are granted almost all the influence over a person's life that a parent of a dependent,, retains as the defacto source of life critical resources . But without any of the expectation of sacrifice, responsibility and support that is appropriate to such a role of influence and control.

    1. Anonymous Coward
      Anonymous Coward

      Re: Housing employee ever to grow up into a business owner

      This is a paperless world - but I will claim my £5.

  20. MrReynolds2U

    I feel like I'm on shaky ground here

    I've written plenty of software at home that I've then taken into work for their use and then adapted for them. In my mind (not contractually) licensing them to use that and any updates made in the workplace.

    The question is whether that means they own not only what I used in work but also what I build outside.

    I never work on my own projects on company time or equipment.

    I'm a pretty prolific coder so I feel like I need to do a bit more research on this subject to protect myself. Most of what I write outside of work is in contribution to FOSS or for educational purposes (e.g. learning concepts in a language) but there are some projects with commercial potential. I would hate for an employer to claim rights over projects worked on out-of-hours at home.

    1. doublelayer Silver badge

      Re: I feel like I'm on shaky ground here

      Read your employment contract. It's possible you have a nice one, where they own just the stuff you develop on their time or equipment and you can write what you like so long as you're not competing with their products. If they have something stronger though, the law is probably on their side. It's not fun, but depending on how nice the company is, it's not always difficult to go through their system to get an exception. If you do, and I can't stress this strongly enough, get the exception in writing and store it at home on your own equipment.

      1. Roland6 Silver badge

        Re: I feel like I'm on shaky ground here

        >but depending on how nice the company is, it's not always difficult to go through their system to get an exception.

        I've found many companies to be reasonable, only getting 'upset' when the out-of-office hobby directly conflicts with or competes with the day job. Plus some individuals don't get discretion and so were rather loud about sticking it to their previous employer - (in principle leaving on Friday and started calling former customers on the Monday. [For one employer I was able to get written dispensation to do this for a couple of clients because they were closing down my business unit and hence strictly could no longer provide the service I had been delivering without opening themselves up to legal challenge.]

  21. tentimes

    Take a big dump on the bosses desk...

    and tell him "You own that - deal with it"

  22. Anonymous Coward
    Anonymous Coward

    All I can say is, I feel sorry for Mick. I know how much this project meant to him and the literally hundreds of hours of research that went into it prior to MD5. I even helped him in the early days. I suppose it's a lesson learnt, get someone legal to review the contracts.

    1. senex1970

      Deluded

      Reading the judgement, the guy had an IP clause in his contract and signed several other agreements that confirmed ownership to the employer. The mind boggles why he *ever* thought he owned it (or who advised him the fight had any chance at all).

    2. doublelayer Silver badge

      And always have a contract. His problem is that, from all the documentation available, there's nothing to prove that he had anything before working there or that the company had ever agreed to let him keep ownership. We don't know whether any of that happened. Perhaps you do, but unless you can prove it somehow, he's still going to lose because the same story could get used by someone completely making it up.

      A legally airtight contract drafted by experienced genius lawyers would be optimal, but you don't always have to go that far. A simple document of understanding signed by both parties would have been sufficient. "Author will write the software and grant us the right to sell it provided that author keeps ownership and receives payment of the following amount" would have been sufficient. It's not that there was a loophole somewhere. There just wasn't anything at all except a standard employment contract.

  23. hayzoos

    Waters are muddier now

    Believe it or not, my career experience here in the US is that independently produced IP is yours. An employer can object on competitive grounds. Granted my sampling may not represent the whole.

    A few of my jobs were paid hourly, so "on company time" was clear cut. If I was not being paid for the time it was mine and so was any work or creation during that time unless I used employer's resources.

    I worked salaried jobs as well. Most of it was not work from home. "On company time" was scheduled work hours even if an irregular schedule.

    I did have some work from home or hotel or client site or on vacation (holiday). I only did work on vacation because I overlooked completing a report prior to leaving (I was in a hurry), had to VPN in to crunch a few numbers and generate the report. "On company time" becomes a bit less clear cut when you can work from anywhere at almost anytime and are salaried.

    My current job is hourly and only a very small part of it can be work from home and only if I bring company equipment home to do it since I "don't do Windows". I have only done that once for 1/2 hour for my own convenience.

    With the major shift towards WFH, another of the factors helping to determine what belongs to whom is going away.

    I have tools I have created on my own time, using my own resources, some while salaried. I even used some for the job. Some are software tools, some are tangible tools. I see no difference, they are mine. I have never had something so substantial as to have an employer want to market it to their customers.

    Even under the US career environment I have experienced, I think the forensic software would belong to the employer after hearing the overall circumstances.

  24. Tempest
    Alert

    Taking a Pragmatic View.

    Early in my career in the 1970s, In was employed by MDS (Mohawk Data Sciences) as a Senior Field Technician covering Northern Ontario (Canada) supporting various main-frame add-on accessories manufactured/leased by MDS. This work entailed carrying replacement PCB modules and various pieces of test equipment and using our own personal vehicles. The test equipment was barely refined and was far larger than need be.

    Spending nights in motel rooms, often illuminated by flashes of aurora borealis. I spent many evenings refining and redesigning the test equipment I was required to haul around. Eventually I had a number of improved test equipments. I made, at no cost, one test unit for a customers own technician intending to save my drive times. I took the precaution of removing all component identification marks as well as embedding the whole device in epoxy in a cigarette tin can.

    I left MDS and later found out they had 'borrowed' this can can and diligently spent several weeks removing epoxy and determining the details. I had no contract nor was I compensated for my work.

    In this case involving MICHAEL PENHALLURICK I would make the following comments:

    1. Michael's labours are of no value to him at the present time;

    2. I am sure he has ideas for improvement;

    3. He should publish the full details of the device/software that was 'stolen' from him in as many magazines as possible (professional and DIY) thereby reducing the value of the stolen device to Zero;

    4, . Publicise the fact that the 'stolen' software is dated and compromised and should not be relied upon (sending e-mails to defence lawyers would no doubt engender great interest). Lawyers seize upon almost anything to defend clients

    5. Redesign (and not plagerise the earlier 'stolen' design) and sign it with his wife's maiden name then market that.

    6. Include a Copyright Notice attributing credits to his wife in any future software he devlops.

    1. Anonymous Coward
      Anonymous Coward

      Re: Taking a Pragmatic View.

      Option 3 sounds like contempt of court in the UK. Not a clever move.

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