Ownership of Creative Works Archives

Have a ‘Pre-Existing Creation?’ Protect it in Interviews and Job Offers

Published on November 7th, 2018 by Alan L. Sklover

“Create with the heart; build with the mind.”

– Criss Jami

ACTUAL CASE HISTORIES: Adelisa, 38, had a rock-solid resume as an Analytics Design Specialist, having been employed by a list of impressive hedge fund employers. She was an expert in assisting Quantitative Analysts design software and algorithms to better predict investment performance. Her experience, skills and industry relations were such that she received recruitment inquiries almost weekly. For a few years, she was on her own as an independent contractor, but was now a mother of two young girls, and had become far more interested in the comfort afforded by a weekly paycheck.

One inquiry she received from a large hedge fund intrigued her so much that she entered into serious talks with them for a senior executive position that included very substantial compensation, great working flexibility and significant job security.

I had worked with Adelisa several times before, each time she climbed the “career ladder.” When she contacted me this time, she had already received a “standard” employment contract from her potential employer. I noticed right away that it was heavily laden with many detailed provisions intended to protect the employer from employees “stealing” creations, inventions, proprietary information and trade secrets. The entire employment agreement consisted of 8 pages, 4 of which were devoted to the subject of protecting the employer’s intellectual property.

Adelisa had the “mirror image” concern. That is, over the course of several years, on her own time she had developed what she referred to as her “Golden Goose,” which was a computer program she had created entirely by herself, years ago, while working as an independent contractor. As best I can explain it (they didn’t teach this stuff in law school), it was “an algorithmic-based platform that could ‘carry’ various data packages to test predictive capacities.” Adelisa said it was actually based on “digital intuition,” and was a type of artificial intelligence.

Her “mirror image” concern was how she could use her “Golden Goose” on the job, yet not lose any of her rights in and to it. The draft employment agreement, like most, provided that anything and everything she might use to do her work for this employer would automatically be deemed the employer’s sole property. She asked if we could help her respond to that language, in order to protect her “Golden Goose.”

It was an interesting project, and the results were well worth it. First, her new job went very well, and her compensation was very significant. And, when, years later, she eventually departed from the company for “greener pastures,” there were no disputes, no claims, and no threats regarding her “Golden Goose,” which was precisely her goal. Mission accomplished.

LESSON TO LEARN: With few exceptions, everything in life – and that includes work life – can be “navigated and negotiated” in wise ways. Taking care, when entering into new work relations, to try to prevent problems from arising in the future, is the wisest of wise ways, and always worth the effort.

In two ways, employees often lose their rights in their pre-existing creations: (1) law (the “Work for Hire” rule), and (2) by agreements they are asked to sign (often called “Assignment Agreements). In this blog post, we address both, and the ways prospective employees can and should protect their “pre-existing creations” in the context of interviewing and job offers.

As a few examples, they include software, works of art, written materials, musical compositions, visual and audio presentations, and inventions. By law, they are materials that can be (a) copyrighted, (b) trademarked and/or (c) patented. By means of self-help – our favorite topic for employees – they can take steps that can protect themselves, and might be just as good, or better.

While each employee’s “pre-existing creations” are unique, and each employment dynamic is unique, there are some generalized observations we can share to assist in the process of protecting employees’ “pre-existing creations.”

As the quote above reminds us, “Create with the heart; build with the mind.” I would simply add, “And then protect what you create as best you can.”

WHAT YOU CAN DO: Here are 12 pointers for employees in Adelisa’s “shoes.” This list is not exhaustive, but it does cover most of the critical points most employees need to understand:
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Work for Hire – Key Words & Phrases

Published on October 30th, 2018 by Alan L. Sklover

Key Words

What is meant by:

Work for Hire”?

A “work for hire” (or “work made for hire”) is an item of creative content that was made on the job. Examples include written works, data analyses, visual presentations, songs, computer code and programs, and useful forms and booklets.

If the creation was made during the period of employment, and is related in some way to the job, the law says that it is a “work for hire” and thus owned entirely by the employer.

What happens if you created it before you started your job, but you used it on your job? Chances are your employer will consider it theirs.

What happens if you created it in your spare time, say, on the weekends? Chances are your employer will consider it theirs.

What happens if it was entirely yours, but you shared it with colleagues, and they used it on the job? Chances are your employer will consider it theirs.

Many employers go further, and insist that their employees sign agreements, often as part of their initial offer letters, that provide that even if you conceived of the idea behind the creation, or improved it, while employed, you must agree it is a “work for hire” and “hereby sign over all rights to the employer.”

As an employee, you need to be vigilant. You can take steps to protect your creative works from being considered a “work for hire” and thus lost.

Steps that you can take include, (i) not sharing your creative works during interviews, (ii) being vigilant about anything you sign, (iii) not bringing into the office or uploading your creative works to your employer’s computers, and (iv) not using your creative works in conjunction with your job.

Still further, you can seek a letter, memo or agreement with your prospective or present employers that protects your creative work(s) from being lost or given up.

You don’t need to lose your rights to your creative works, writings, and inventions. And, you definitely don’t need disputes, lawsuits or legal fees.

You do need to be careful. There is a fierce competition for great ideas, and the valuable creations that come from them.

Forewarned is forearmed.

More information on Protecting Your Creations can be found [here].

For a Model Letter requesting Rights in Your Creations on Your Present Job, just [Click Here.]

Need to send a model memo or letter to make a request or complaint? A good checklist or form agreement? For a complete list of our Model Letters, Memos, Checklists and Sample Agreements, Just [click here.]

Interested in Membership? It’s free, and has advantages, including discounts on our products. Just [click here.]

Need a private telephone consultation? Just [click here.] Evenings and weekends can usually be accommodated.

© 2018 Alan L. Sklover. All Rights Reserved and Strictly Enforced.

“Employer Ask You to Sign an Agreement? Ask Your Employer to Pay Your Legal Cost”

Published on September 9th, 2015 by Alan L. Sklover

“I busted a mirror and got seven years bad luck, but my lawyer thinks he can get me five.”

– Steven Wright

ACTUAL “CASE HISTORY: Charlene, a furniture designer, had been with her employer for seven years. She was happy in her job, was well-liked, and quite productive. Her job was a short commute from home, and her manager was family-friendly. All was good.

One morning she received an email from the Human Resources Director, addressed to all of the company’s 150 employees, advising them that the company was updating all of its employment practices, and for this reason all employees were required to sign an updated “Confidentiality and Inventions Agreement” to safeguard the company’s trade secrets and proprietary information. (Rumor had it that a private equity firm might be interested in buying Charlene’s employer, and it was for this reason that a new, revised Confidentiality and Inventions Agreement was being required.)

The agreement was six pages long and contained a lot of complicated legal language. Charlene thought she understood it, but there was a lot “legalese” in it. She considered having our firm review it with her, but knew it would cost her a consultation fee of hundreds of dollars. When she called, she mentioned the unfairness of her employer requiring her to pay to review a document that they needed, not her.

We suggested she simply ask for the cost to be reimbursed. Sure enough, she did. After a few emails back and forth, her employer agreed to treat it just like any other business-related expense. Charlene was pleased. We were pleased, and now we suggest all employees in this situation do so. You never know. Sure is worth a shot.

LESSON TO LEARN: If you don’t ask, you won’t get. So long as any workplace request has the “Three R’s,” that is, it is (i) Respectfully presented, (ii) Reasonable in what is sought, and (iii) is based on a sound and logical Rationale, there really is no downside to making it.

The logic is simple: When someone wants something from you, and even moreso when they need it, there is nothing wrong with asking for something in return, especially the amount of money it will cost you to provide it for them.

Who knows? You might just get what you want. In this context, your chances are pretty good. Why not give it a try?

WHAT YOU CAN DO: In most – but not all – workplace instances of your employer asking you to sign an agreement, consider asking, in return, before you sign the agreement, that your employer agree to reimburse you the cost of an attorney’s review and consultation. Here are some tips in doing so:
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“What are ‘Moral Rights’ in things I create at work?”

Published on May 9th, 2014 by Alan L Sklover

Question: Dear Alan: After four months between jobs, I am thrilled to receive a job offer from a good company. They have sent me an agreement to sign that seems fine with me. However there is one paragraph that says: 

“To the extent permitted by applicable law, you hereby waive any and all Moral Rights you may have, including the rights of paternity, integrity, disclosure and withdrawal.” 

Sounds frightful. I am at a loss. What does this mean?

Perth, Australia

Answer: Dear Jenelle: You probably have nothing to worry about. While it sure sounds ominous to give up anything “moral” including “paternity” and “integrity,” in the law of most countries and in the practical world at most companies this is usually not a significant problem. First I will describe “Moral Rights” for you, and then I will explain how they affect, or might affect, you at work.

1. What are “Moral Rights?” No doubt you have heard of the word “copyright.” That is, as the word implies, “the right to make a copy.” In the law of many countries, there are other rights, as well, that are reserved for “creative people,” usually meaning authors and visual artists, namely the right to control some other aspects of the fate of their creations. These are “moral rights.” 

In some countries and states, these additional “creative” rights are written into statutes, that is, laws passed by legislatures. In other countries and states, these additional “creative” rights are not written into statutes, but instead are simply recognized by Courts. Where “moral rights” are not written into statutes, their “boundaries” are not clearly delineated. 

The concept of “moral rights” arises from a belief that there is something very special between a creative person and his or her creation, something akin to the special relation between a mother and her child, that must be respected, preserved and protected. Moral rights are not monetary in nature, but rather they are personal and reputational. Sometimes the French words “Droit Moral” are seen used in place of “Moral Rights.” 

While moral rights for many years were attached only to visual images and written words, in more recent years we have seen more and more claims of “moral rights” to digitally creative works, such as graphics, logos, written code and animations. 

2. The most common kind of Moral Rights relate to (a) “integrity, and (b) attribution.” Moral Rights relate to certain rights of creative people. They may include (i) the right of the creator of the work to receive credit for the creation (“attribution”), (ii) the right of a creator of the work to prevent his or her creation from being altered without the creator’s consent (“integrity”), (iii) the right to determine how much or in what manner the work is reproduced (“paternity”), and (iv) the right to determine how or in what places the creative work is displayed (“disclosure”) or displayed at all (“withdrawal.”) Incidentally, a creative person is also considered to have a moral right not to be associated with a creative work if he or she does not want to be. 

3. Who has Moral Rights? A creative person is considered to have moral rights in his or her creative work regardless of who owns that work. Moral rights are not transferrable, and end upon the passing of the creative person. Even if the author has conveyed away the ownership of a work, or the author’s copyright in it, the author retains the moral rights to the work. Authors may, however, waive their moral rights by doing so in writing. (Jenelle, that is exactly what your prospective employer is asking you to do right now in your employment agreement.)   

I don’t know too much about Australian law, other than that it is based on English law, as is American law. In the U.S. a federal law known as the Visual Artists Rights Act of 1990 (commonly called “VARA”) provides for “Moral Rights,” but the protections afforded by that law apply only to works of “visual art” which include paintings, drawings, prints, sculptures, and photographs. 

4. Why do employers care about “Moral Rights” at work? Generally speaking, the things that an employee “creates” during the period of employment – including perhaps writings, drawings, computer codes, musical works or photographs –are presumed to be owned by the employer. So, the employer can use and sell those creative works, or license the copyright relating to those works to others.

However, the employee (whether still employed there or not) might one day just come back and say, “Hey, I created that work, and I have ‘moral rights’ in and to that work. So, whoever now owns it, (a) I insist I get credit for it, (b) I don’t want anyone to modify or alter it, and (c) I don’t want it exhibited unless it is in a round purple frame.” That is to say, the employee might seek to exercise his or her moral rights to that creative work, and the Courts just might uphold those moral rights. For an employer, this can be summed up in one word: Ouch! 

It is for this reason, and because moral rights are now more often claimed in a wider variety of “creative works,” many employers are insisting on a written waiver from all of their employees – both creative and uncreative, alike – of any and all moral rights they may now or in the future have in any kind of creative work. That is exactly what your prospective employer is doing now to you, and probably to every new employee it hires. 

It is kind of funny: most employers, themselves, have no idea what “moral rights” are, and most of their attorneys are, likewise, without a clue on this subject. Still, they ask for them to be waived, “whatever they are.” If you are not a creative person who creates creative things for a living, you have nothing to worry about. Even if you are such a person, it is quite rare in my experience that you will seek to exercise such moral rights. 

On the other hand, now that you know what “moral rights” are, and you might find them valuable to you, it is more likely you can stand up and exercise them. For the employee who now – after reading this blog post – knows more his or her greater rights, and can now exercise them, I say, “Go for it!”

Want to have or share ownership or authorship rights in creative works you create? We offer Two Model Memos Requesting Ownership/Authorship Rights in what you create at work. If you do, just [click here.] They show you “What to Say, and How to Say It.”™ Delivered by Email – Instantly!

Jenelle, thanks for writing in from “down under.” And thanks, too, for letting me explain something to my blog family that I have been wanting to write about for a long, long time. 

My Best to You,
Al Sklover 

P.S.: Don’t forget: we offer Model Letters, Memos, Checklists and Form Agreements for almost every workplace issue, concern and problem that requires your smart navigating and negotiating. They show you “What to Say, How to Say It.™” Want to see our Entire List? Just [click here.] Delivered by Email – Instantly! 

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“Can I stop my former employer from using my voice on its answering service?”

Published on November 2nd, 2011 by Alan L Sklover

Question: I was let go from my previous job in February, 2010. When I was let go, I informed the General Manager and the Human Resources Manager that I wanted my voice taken off the main answering machine, and his office answering machine.

The General Manager snickered, and I said, “If you want to pay me to use my voice, that’s fine.” He said, “No.” I gave him one week to remove it. As of this date, my voice is still there.

What can I do? What rights do I have, if any? Thank you.

Manteca, California

Answer: Dear C.M.: Here’s the story:      

1. First, California has a law prohibiting the use of a person’s voice without their prior consent. Probably because so many celebrities make their home in California, it has a strict law prohibiting the use of a person’s (a) name, (b) voice, (c) signature, (d) photograph, and (e) likeness. It is California Civil Code Section 3344(a). A few other states, including New York and Massachusetts, also have similar laws. California’s law imposes a penalty of the greater of (i) $750 or (ii) an aggrieved persons actual damages, on the wrongdoer.  

2. That said, it is my expectation that you did, in fact, give your prior consent when you were still an employee of the company. From what you have written, and from my own experience, it is my expectation that, when you placed your voice on the answering machines, you did, in fact, give your former employer “prior consent” to its use. I mean, surely when you recorded the message, you must have known it was going to be used. Can a person then, later, withdraw that consent, once it is given? The law does not say, but the use of the words “prior consent” in the law suggests that, once given, consent cannot be withdrawn in order to make any further use capable of characterization as “without prior consent.” The law, though, is not “black and white” on that issue.

3. However, I do suggest you make a formal, written request to your former General Manager, and cite this law, demanding they “Cease and Desist.” I strongly recommend that you send a stern letter to your former employer, citing this California law, formally demanding the use of your voice “cease and desist,” which means be discontinued. If you can get an attorney-friend to write such a letter for you, all the better. Just the thought of having to hire an attorney to defend against such a lawsuit, if brought, even in a Small Claims court, may well convince your former General Manager to cease his snickering, and just do what is right. In fact, sending the letter to the CEO or Board Chairman might just embarrass your former General Manager into acting more grown up than he has to date on this subject.

We do offer a Model Letter entitled “Cease and Desist Use of Name and Photo” that could easily be adapted to your circumstances. If interested, simply [click here].

C.M., I hope this is helpful. At a very minimum, there is personal satisfaction in standing up for yourself to a former employer who “snickers” when asked to engage in a simple task that would be nothing more than doing the “right thing.” I encourage you to do it.

Thanks for writing in; please help us by telling others of our blogsite, our Sklover On-Demand-Videos, and our helpful Model Letters, Memos, Checklists and Agreements.

Al Sklover

 Repairing the World,
One Empowered and Productive Employee at a Time ™ 

© 2011 Alan L. Sklover, All Rights Reserved.

Alan L. Sklover

Alan L. Sklover

Employment Attorney
and Career Strategist
for over 35 years

Job Security and Career Success now depend on knowing how to navigate and negotiate to gain the most for your skills, time and efforts. Learn the trade secrets and 'uncommon common sense' of Attorney Alan L. Sklover, the leading authority on "Negotiating for Yourself at Work™".

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