I created product on the side as a side project in my own time and it has become a huge hit in the community to a point where my employers wants me to transfer the code-base over. The company does OSS and my side-project is also Open-Source.
I've developed it on my own time but the product directly relates to what my employer does so I've sort of cornered myself in a bad place. In hindsight, I also made some mistakes in how I went about evangelizing it.
Ideally, I want to keep the ownership with myself but I doubt that is going to work out.
I think what I want is: - to be compensated in some form for all the time I've put in over the last two years - to have control over the product roadmap (this I'm fairly confident won't happen in the way I want in the long run)
What are my options here? What should I ask for here? I don't have much clue as to what can I ask for here so any suggestions would be helpful. People at my company generally wants to work things out to keep everyone happy to some degree.
Depending on your country and state, as well as your employment agreement, there are a lot of impactful variables. Intuition and personal relationships are not going to help you solve this issue, especially, absent knowing the law and your position.
One thing to consider- spin off your side project and try to get your employer as your first customer or as the exclusive distributor.
But your employment contract should have an IP provision, and that is going to be 99% of any outcome.
You are now in a negotiation, and so "what can I ask for" is largely determined by "what is the BATNA,"[1] i.e. what happens if you and your company fail to reach a mutually acceptable compromise and start acting purely in your own respective self-interests.
This will partly come down to legal issues (can the company take over the IP from you), but for an open source company, I would speculate that reputational issues from a "hostile takeover" of another OSS project could change the calculus substantially. If the company takes over the project by force, and you publicize the fact that they did this via the IP clause of your employment contract (which most developers regard as somewhat evil), that doesn't seem fun for their PR team. Even worse if you'd be able to fork the project.
Of course, this depends a lot on the details of your situation, so you should definitely find someone to talk through the details with who is good at negotiating. Just not sure if a lawyer is the best/only person to talk to.
[1]: https://en.wikipedia.org/wiki/Best_alternative_to_a_negotiat...
But no matter what's in your contact, that route is probably not your best option. From what I understand, you created, in your own time, a project that is valuable to your employer, and that they want to use and develop. You're the expert on this project. Not just that, you designed every aspect of it, popularised it, and your employer apparently likes it enough to want it. These are valuable skills. At the very least, this should imply a nice raise. Perhaps a promotion. You're the natural PO and the natural lead developer for this project.
I would discuss this with your employer. See if they're willing to give you a nice promotion with this project as your primary responsibility and an accompanying raise. Maybe a bonus too.
As much as I hate to say it, that doesn't sound like a side project. That just sounds like overtime.
How have they responded when you told them:
* I'd like to keep roadmap control
* I'd like to be compensated for the work I put in on my own time out side of work. (which is well documented from the commit logs, and the fact I wasn't using an employer owned computer)
* I'd like to keep working on this on my own time outside of work.
If you are worried about long-long term, i.e. the time that exists after you leave the company, with the right software licensing strategy it's likely you could fork the project down the road and retain roadmap control of at least a fork of the main project.
You may want to consider working with your company's lawyers to choose a license (you can re-license open source software -- https://opensource.stackexchange.com/questions/33/how-can-a-...) or figure out if the Apache license meets your needs.
Short term it sounds like the outcome is pretty clear, long term seems like you have a lot of options.
I'd concentrate on the positive rather than the negative, that if you get to work on this project via your employer from this point on you'll be getting paid to do the thing you were doing for free.
Getting paid for past work seems unlikely. You already admitted you didn't care about compensation by open sourcing the project. You were willing to give it to anyone, including your own company as open source. Not that you can't ask, maybe they'll be nice about it, but just saying it's strange that before they asked you were giving it away for free to any company and now that they asked you want compensation.
To be harsh you arguably did something wrong by making something that directly competes with your employer. It doesn't matter that it was on your own time. It's called a "Duty of Loyalty" and basically means you can't get paid as an employee and at the same time stab them in the back by competing with them.
https://www.google.com/search?q=duty%20of%20loyalty%20employ...
Maybe you don't think it competes but you said yourself it directly relates to what they do so yes, as you admitted, you've cornered yourself in a bad place.
Some companies, like Google, have an easy way to get a signed contract saying they will not claim interest in your project before you start (or they'll point out it's a conflict of interest like if you said you wanted to make a cloud based mail service ... in which case my guess is they would try to get you to join the gmail team, contribute to it, or you could quit and start your cloud based emails start up). The point is they are upfront about the legal issues and provide a way to work out a solution. Most companies don't have a procedure for this until it's too late.
If you have to abandon what you've done, leave, and recreate a new version, would not take you two years. Two months? Less? Not saying this is what you should do, just that you consider what it would entail, if you handed the company your side project and then left to go re-create it from scratch, with all the lessons learned from the first time.
[Manager Names]
My time at [Company Name] has been a great experience. It has been a pleasure working with you. As you may know I created [ Open source project ] on [Date] and have enjoyed growing the product and user base. Building and supporting successful products is something I enjoy and will be looking for opportunities to do that outside of my current role. [Day 2 weeks from now] will be my last day at [Company]
Best of Luck
Then you can negotiate from a place of power. Don't say anything about your plans other than that you are going to pursue other opportunities. At a minimum they will make you a counter offer, something like 10% pay increase and a new title of "Product Director". It is up to you if you want to negotiate something different like back pay or if you want to try to create a new product from scratch on your own or if you want to find another job.
You have two other options: 1. You can stop immediately. Just say you are no longer maintaining and supporting it for free. You can work on it on company time. If anyone wants to pay you for your personal time to work on fixes and bug-fixes they wan, they can, at which point you can do that work, and release it as either part of the open-source project you have, or as a private fork for that customer.
2. You can quit your job. Go work somewhere else who is willing to work on your own open-source projects on your own time and maintain IP. Then, abandon the project since it no longer belongs to you. Your current company is the copyright owner. Start a fork, which will now be yours, and you're the copyright owner of any new code, including changes you made to the old code. If the original license is permissive, you are under no obligate to contribute back.
Having said all of that, this is not what I would personally do. I would be happy that the company I work on wants my work so bad that they're asking for the transfer of ownership back to them. I would tell them that shouldn't be a problem but you'd like something for it, such as being able to work on it on company time, etc. Otherwise it sounds like they just want to own this thing you created and have you continue to work on it for free on your own time indefinitely, which I don't believe is what they're asking for -- you weren't clear about that.
I personally believe that going to a lawyer at this stage is 1) expensive and 2) unnecessarily confrontational. I understand the argument about understanding your legal options, but at the point where you start to rely on the law, you're entering a contentious negotiation which can be unpleasant and expensive for everyone.
So I'd just say "Hey, Employer, I've put in a lot of my personal time into this project. So I think it's fair that if you want it that I should be recognized in a concrete tangible way since clearly you want it because it adds more value to the business."
And I think depending on the kind of company you work for, I'd ask for additional equity in the company (since you'd be making the company more valuable) plus additional cash (because you were working on this project night-and-day) and some sort of recognition would all be reasonable asks.
Let me restate this: You had an idea you were so interested in you created it in your off time. You made it open source. Your company likes it so much they want to contribute to the codebase. You, being the leading expert in this software, are the one most likely to be tasked with working on this codebase.
Beyond the obvious "OMG You're going to get paid to work on your pet project!"
the concern being that they seem to want to control it.
Compensation is probably not going to happen. IF it does then you are pretty much guaranteed they will own and control it.
I would advise NOT seeking compensation, and instead saying "omg! I'm so glad you appreciate the work I've put into this open source project. When can I speak to folks about how the current development process of this project and how to submit pull requests?"
Keep redirecting the conversation towards them contributing. If they ultimately say they need to control the codebase just tell them that if they're not ok with contributing to the project they can always fork it. They get the control they want and it's probably not worth suing you and against their best interest to fire you, because you're the leading expert in how it works.
Side note: I'd switch the license to GPL ASAP. Not because I'm a huge GPL fan but because the GPL can be used as a weapon to prevent them from using it without contributing. Or, it is better at that than any other license. It sounds like you're the sole contributor, so that's probably legally sound. I'd also make some quick improvements that they would not want to forgo since it sounds like they already have the current version under the Apache license.
Currently, if they technically own the code, your open-sourcing it isn’t valid. You can put an Apache license in the repo, but you can’t legally give a license to others to use something you don’t actually own.
So the code is not really open source until someone puts that license on it with company authority. It is just public.
It sounds like this product competes with their other products. Even if they didn’t ask you to turn over control you would have problems working for them during the day, competing with them in the evening. Possibly liability even.
If you want control, and want to use it to do things they don’t want, you probably have to leave the company.
If you are going to leave, it seems you might turn over the repo to them to avoid legal trouble, and then be sure that someone else at the coming makes the open-source status official. Then you or others can fork it. But it seems you should only do further work on the fork if and after leaving.
Again this should not be construed as real legal advice as I am not a lawyer.
Maybe a restrictive license may help: if your company takes the code and modify it, make them under the obligation of releasing the source code too.
What is the current license of your project?
Ultimately, nothing prevents you from deleting your public Git repo. You can decide that your project is not available anymore, it is your right.
I’ll also second all of the suggestions to talk with a lawyer, not to go on the attack but to verify that whatever agreement you come to actually gives you the rights that you think it does— as you’ve discovered, small clauses in contracts can have big, unexpected effects.
My non-lawyer understanding is that if you live in California and your company is based or the contract states that it is intended to be interpreted by California law then I’ve always operated under the following understanding:
(Not a lawyer but...) I’ve been led to believe you are safe if you work on your own time, with your own resources and it does not directly relate to the employer.
I think someone referred to this once as The California Clause. If that is the right name then I’d say the California clause is not going to protect your ownership on this case. However, maybe you aren’t in California? It is hard to imagine a state in the US that is more employee friendly so I would be surprised if you found your situation better elsewhere. Besides possibly another country? Even then I’d be surprised. Things tend to trend the other direction outside of California.
That being said, many have told you to discuss with a lawyer. And some have even warned that it can cause unnecessary conflict if you do. They aren’t wrong but you can always talk to a lawyer just to see what they think your options are. If this is as much of a slam dunk case in favor of your employer as I assume it is, I like to think a good lawyer would be able to let you know.
On the bright side, if your employer does take it over and they still allow it to be open source, that’s super great! Getting paid to do open source is a blessing. There are also so many benefits to being the creator of a valuable tool in your company. These things can often lead to promotions, bonuses and all kinds of personal fulfillment at work.
If you do learn that you’re going to have to hand it over, find a way to spin it into a good thing. Don’t let it make you bitter. And next time you build something on the side, consider your employment contract and decide if you want to build something that doesn’t relate with your employer so you might have a better shot to align your desire to keep it.
Try not to let this make you bitter. This could be a great thing whichever way it turns out.
Ultimately, as the creator, it's in the best interest of the open source project and society that it remain under your control.
Most of the responses here concentrate on trying to get some kind of financial return for your work.
That's important, but for you it might not be the most important thing (you were giving it away and working on it in your spare time, right?)
Consider asking to make it your full time job, or something like that. You clearly know the field well, and you've managed to build community. Having the company resources behind you and the responsibility to run the project like you want might be an outcome that interests you.
> "Directly relates to what my employer does"
You will face multiple charges. You have no IDEA - how brutal it can be in court. In 99% case - You will fail mostly because - you built your company competitor while working in a company that is more likely to become your future competitor if court grants you your right. This will break 99.999% company of the world. In many of the employee contracts - Some/Most of the Company has a clause that - you won't be working for the next 18 months or any X months in a company or product that is directly their competitor.
My Suggestion as a company, "Be Polite to your BOSS and tell them every truth on why you built", "what provoked you building something like this outside of the company", "How would you like to see yourself in next 10 year".
If your company is really "p* off", Max, they will do is, they will stop some future promotion and would most likely keep you away from most of their work, they will remain alert on your every step and would call a lawyer to inform you a certain thing, for which they don't have to bear the cost of fighting court case at the end, company saving money.
============= THINGS WOULD HAVE BEEN LITTLE DIFFERENT ########
If you would not have built anything related to what your employer does or what your company does.
###########
Imagine you have company and you hired some employee. Now all or some or one of them has build something related to exactly what your company does, how would you handle?
Dont be afraid to be transparent. I would still review your contract and potentially call a lawyer just to see if theres any action whatsoever but it might not be necessary.
Just be open about your wants and needs. Tell them you just want to be able to keep your project since you worked on it in your own time. Hell tell them you are okay exposing your codebase under their org. But get it in writing that you intend to keep rights to all code you write even if done at work. Allowing you to be paid to work on it for customers they nab.
At the end of it its all your choice. Just negotiate terms that make you happy. Do not hold back concerns. Period. But be smart and ensure they have a legal footprint. Make sure to get copies of anything you sign. Dont agree to anything that isnt on paper.
Only a proper lawyer can help you, though you should do initial searches online to see wether you get an inkling of where you stand, and possibly reduce amount of time needed to spend on expensive lawyer. See if there are free legal councel near where you live, online or if anything can be covered by insurance.
"I've developed it on my own time but the product directly relates to what my employer does"
This is a bright huge red flag. Depending on the contract you signed, creating something in direct competition while employed can be grounds for assuming ownership. Using company resources, time, knowledge, clout, internal discussions and/or reputation, can be strong case for this company, against your position. Evidence and witnesses as well as your own words can be used against your position. If this IP was unrelated to company offerings, they would be less interested, and probably objectively strengthen your own case somewhat, depending on what they can prove and not.
If you want to go very cheap, or avoid possible bill-hungry lawyers: Ask your boss wether they've cleared this with their internal lawyers and if you can get this confimed via a signed statement of company claims of ownership and exactly about what they claim ownership of and not. Always go internally through nearest boss or neutral intermediate in writing: Export the communications as well. Avoid contradicting your own claims unwittingly.
If you get this letter and don't want to lawyer-up, I'm afraid your options are limited and you should do whatever necessary to avoid getting fired or sued. If they bluffed, you just called them on it, and can negotiate from there.
Unfortunately, depending on the legal councel at this company and possible value of your work, your standing looks very weak, possibly damaging against you. This is why it's so vital to keep work and personal life divided. What may help in such situations is to do book-keeping of resources and hours spent separately for such side-project and document the process, while making sure Nothing from work is used.
Depending on your employment contract, this could be tricky for you. If your employer is nice about this and they want to encourage you, I would use this opportunity to negotiate something here which creates win-win for both. Clearly, they see a lot of value in this codebase so instead of turning this into a conflict, sell yourself to your employer. You can definitely ask for leadership control over it. Not sure if monetarily, you can get anything but worth a try.
Your employer probably owns the code, but as its primary creator, you still have leverage.
If your employer used standard employment agreements when you signed up with them, the product almost certainly belongs to your employer. This is especially the case if you used any employer-owned equipment to create it (laptops, networks, etc.).
However, your employer probably knows that if they are aggressive, you will become unmotivated and drop any work on it, making it valueless and probably causing you to hate your job and quit. If they really value the product and you, they'll find a way to make the product and your career successful.
You can ask them to give you a stake in its success, and officially bring it into the company. You can also ask them to give it back to you if they stop supporting it. If you consult with a lawyer, they can probably advise you on various frameworks on how to organize such a deal.
Yeah, that makes it complicated. Even the advice to get a lawyer is tricky, as it could telegraph intent and put you even further in a corner.
I suppose a consultation is fine, but I would be very careful about letting them know you retained one.
I just do corporate politics by first being an employee who does everything within reason to help the work progress. Eventually this builds towards managers acting in my interest. If they fail to do that I start removing myself from such extra activities. If you wrote some great software they can use you should transfer it since they will find ways to reward you for doing such things... unless you know they wont, then you have to be a pain in the ass while reminding them what you've already selflessly done for them.
Just be sure you are a nice guy and ask yourself if they are nice to you. If not, can you condition them to be nice? If not, take the legal route for everything.
I know it's not going to resolve any issues but at least you are forcing them to say why that's not possible now and what long term plans they might have in store.
My 2 cents - don’t.
You want compensation, you want to direct the roadmap. Your employer wants ownership. Where is the conflict?
Why make one?
(P.S. - my legal experience “peaked” about a decade ago when I hired Andrew Valentine, managing partner of DLA Piper Palo Alto to help bridge what should have been an easy win-win. We ended with a whole lot of losers. I got a full refund, though, so yah.)
(Also - Andrew, in case you read this, you never sent me the invoice for the out-of-pocket expenses you paid to UPS documents to San Bruno. I’d be happy to pay those. Contact in profile.)
If they pressure you to sign documents then consider that they don't have your best interests at heart. Depending on the company their position could either end up being very friendly, or very unfriendly towards you.
Also remember that, if you feel this is a project with great potential, it might be worth quitting your job over.
The legal position will be different depending on the jurisdiction you are based in. The laws of Belgium are different to those in say, Delaware.
...
But I don't feel like this is primarily a legal issue. It is a negotiation about property. The contracts come into play but the company and you both benefit more from a negotiated agreement than from a fight. It hurts them if you get mad and just quit, fork, give them a PR black-eye, and take the community with you.
So you should: 1. Take your employment contract and ask an attorney to look at it. 2. Ask if this document gives them the right to transfer control of an open-source project to them. 3. Decide if you are willing to quit over this or not.
Once your head is clear on what you are willing to do, it is time to start negotiating...
Hire the attorney to negotiate for you. Don't do it yourself -- you need a 3rd party and lawyers are professional negotiators. Expect to spend some money -- feels roughly like 5-10 hours if it goes quickly. You should be very clear to your company that you are asking a lawyer to negotiate for you because you want to work something out and you feel like it will destroy your relationship with them if you try to do it yourself.
Then get the attorney to discover why they want legal control of a project that is open-source when they already have you as an employee. If they care about the project and just want to influence the roadmap, they could just pay you to work on it full-time and get most of the benefit. If they feel like they need it for other reasons, see if there is an overlap between what you want and what they want. If they just feel like they own everything you do, you need to decide if that's what you signed up for.
Overall, I find it hard to give any better advice because you only presented what you want and not what the company wants. It could be anything from appearances (their investors want them have control) to money (they see a way to make a lot of money from your work). Until you know what the other party wants, you can't really come up with an agreement.
Schools can also demand ownership of your independent work by withholding your diploma, a rather nasty practice.
The best option is probably to look for another job (or self-employment) ASAP and make sure that your new contract clearly specifies your own independent project(s) as not being owned by the company.
I'm very curious about what these mistakes were. It would be great to learn from this.
If a couple hundred is too much, you just did the cost/benefit and decided it's not worth it.
If they just want the codebase it's a simple OSS fork, why would they need your permission?
Get your employment contract in front of a lawyer.
He can only bother you if you code for money outside your work. It can be seen as a second job. Again check your contract.
What does this mean, did you use company time and resources in doing so?
Even if you talk to them later without one, you need to know where you stand from a legal standpoint.
Are you paid by the hour? If not, what does your "own time" mean?
It’s pretty clear you have no legal position.
But you are the key player in the project.
So negotiate. Decide what you could get out of it and ask for it.
There should be no lawyer involved with this cause it’s not a legal negotiation.
There are special, state-wide rights that you have in CA that you cannot sign away, some of which apply to work like this.
What does it even mean to "keep the ownership" in this case. You have never had an ownership when it's open-source. Probably they can take you're code, fork it and use without your approval, depends on the license used.
Step 2. Figure out what you want, and why, and get it in writing. Figure out what your company wants, and why, and get it in writing. Then open a dialogue and its time to start talking and negotiating!