“Who Owns The ‘Creative Things’ You Produce At Work?”

“A hunch is creativity trying to tell you something.”

– Frank Capra

ACTUAL CASE HISTORY*: Darren, 55, a packaging engineer from Western Pennsylvania, worked for an international pharmaceutical firm. People described Darren as a “natural-born tinkerer.” If he wasn’t fixing a clock, he was taking apart a computer just to see how it worked.

As a packaging engineer, Darren spent his entire day trying to figure out how to make packaging for pharmaceutical companies work better. “Better” in this context meant easier to open, preventing the medication from contaminants, and non-toxic. Long ago, if you bought aspirin, for example, it came in a bottle of 50 or 100 tablets with a simple screw-off top. Darren was a member of the team that first thought of, and then engineered, those small “foil packs” inside of which you can now buy just two aspirins at a newsstand, or even at a gas station.

Darren was also one of the people who came up with the idea (some say “nightmare”) of the “child-proof” container. And it was Darren’s team that perfected those foil-backed “push-through” pill packets. At times Darren mesmerized us with accounts of the advantages and disadvantages of different packaging materials, different shaped containers, and even different color packaging. Also, certain packaging kept medicines “fresh” for a longer time, thus extending their expiration date and their “shelf-life.”

Years ago Darren wondered to himself, “We put expiration dates on our packaging, but we never tell people how they should dispose of expired medications.” He discussed the issue with his colleagues and his manager, but the only response he received was, “Well, they should just throw them out.” Because so many new kinds of packaging are now required to be biodegradable, Darren knew that sooner or later, all of these discarded medications would get into the environment, and then into our drinking water.

On Darren’s own time at home, he researched the subject, and found to his surprise that there didn’t seem to exist any consumer-oriented instruction booklet telling consumers how to safely dispose of outdated medications. So, as was Darren’s nature, he spent his spare time on the weekends over a period of three months preparing a clear, concise and consumer-friendly booklet explaining the “why” and “how” of safe disposal of outdated medications. As was also Darren’s nature, he passed it around to his colleagues for comment.

A call from his employer’s Legal Department came two weeks later. Darren was called to a meeting at which time he was reprimanded for having placed “written by Darren Smith” below the title of the booklet. At the meeting he was also reprimanded for placing “© 2009 Darren [Smith]” at the bottom of the first page of the booklet. He was told that he had violated his company’s Code of Conduct by “attempting to steal intellectual property,” and a note to that effect would be placed into his Human Resources file. Darren was aghast and crestfallen.

Darren was certain that the attorneys at the meeting did not understand that he had written the booklet on his own free time, on his own initiative, on his home computer, without company resources after his manager expressed no interest in the idea. When Darren calmly explained these things to the attorneys, they didn’t think any of it was relevant.

Darren then called our firm for a telephone consultation. In that consultation, we explained to Darren that – despite the seeming unfairness of it all – the company’s attorneys were right: the booklet “belonged to” the company, so his name on it could be characterized as his attempt to “own” it, and the law was quite clear on both of these points.

Darren was bitterly disappointed. He shared his feelings that he would not likely take such initiative again, especially if it was going to threaten his job. No matter how much he cared about the environment, no matter how much he was loyal to his employer, his first concern had to be his family’s well-being, and keeping his job was necessary for that.

LESSON TO LEARN: The law in the United States, and in almost all other countries, is clear: if you “create” a document, formula, invention or other “creation” related to the subject of your employment, it is presumed – unless you have a written agreement to the contrary – you did it for the benefit of the employer, and the employer is deemed by law to be its “author,” “creator,” and owner.

Section 101 of the United States Copyright Act calls materials created by employees as part of the normal scope of their employment “works for hire” (sometimes called a “work made for hire”), and provides that the employer, not the employee, is the “author” of the work created. (In many other countries, this is called “corporate authorship.”) It is an exception to the general rule that whoever creates a work is the work’s author. Constitutional law in the U.S. provides that, where our Congress has enacted laws affecting certain areas of our lives, states cannot create laws to conflict with the federal laws. This is called the “doctrine of preemption,” and is firmly accepted by all courts. So state laws can’t change this.

But Section 201 of the United States Copyright Act also provides that the employer is not the author if “the parties have expressly agreed otherwise in a written instrument signed by them.”

It does not matter if your creation was conceived and developed on your own time, at your own expense, using your own equipment and resources, or at your own initiative. All that matters is that (a) you are employed, (b) your creation is related to your employment, and (c) there is no agreement between your employer and yourself that expresses that you are the “creator” and “owner.”

These days, many corporate employers are going one step further to ensure they are the owners of the “intellectual property” produced by their employees. They have employees sign a document, often called an “Agreement Regarding Inventions and Creations,” or words to that effect, in which they have all employees agree that the employer is the owner of all such creations, and that the employee will sign any papers necessary to prove that.

The key lesson to learn is this: when it comes to “creations” related to your work, your own “creative initiative” may not be to your benefit. In fact, as in Darren’s case, it could be to your detriment. If you want to create any material related to your work, you must either: (a) accept that you will not be deemed its author and owner, or (b) make sure you first obtain in writing from your employer a letter, agreement or other written expression that you are the creation’s sole author and owner, or at least that you will share “credit for creation” and ownership rights.

WHAT YOU CAN DO: Some people say, “Can’t I just create this material, and not tell my employer?” Sure, you can, but if it ever should become known that you did – as it likely would if the “creation” was ever published or commercialized – the employee would likely lose in five ways: first, regarding all rights to the material; second, significant legal expense; third, being required to pay back to the employer any monies already received for the creation; fourth, quite significantly, in terms of your reputation; and fifth, possibly most troubling, it could even cost you your job. It is for these reasons, and others, that the decision to obtain a prior agreement as to authorship and ownership seems to us to be the preferable, more practical and more prudent approach.

Might this path result in your idea being “stolen” by your company? Sure, but the law says that “ideas do not belong to anyone, only expressions and developments of ideas.” Thus, “ideas,” in and of themselves, no one owns, and are not legally protectable. It is your “development and expression” of that idea – something you can keep to yourself if not rewarded for sharing – that is “protectable.”

In this regard, here are the six (6) things you need to know, and keep in mind:

(1) Written Agreement or Acknowledgement Necessary: If you are interested in “creating” a document, book, invention, innovation or other material related to your work, and would like to have, or share (a) its authorship, and/or (b) its ownership, you need to first obtain a written acknowledgement and/or agreement saying so from your employer.

(2) After the Idea, But Before the Creation: The wisest course of action is to obtain an agreement from your employer that you will be the (sole or partial) author and owner of all rights to your creation BEFORE you create it. Once you have created it, it belongs to your employer, and you will then have to request that rights to your creation be transferred back to you, which is a much more difficult objective to accomplish.

(3) Dealing with Anxiety: Approaching your employer about this subject may seem daunting to you. That being said, your doing so should not cause you anxiety. First, expressing interest in “going above and beyond” your usual duties is something to be proud of, not ashamed of. Second, such a discussion is a sign of maturity, prudence and professionalism; it is the opposite of deceptive or improper behavior. Finally, it is something to do to protect your job, your career and your family. Nothing should be more important.

(4) No Special Words, Forms or Phrases are Necessary: As in any agreement, the only truly essential ingredient is that it expresses the two parties’ understanding in a way that is clear enough for the average eighth grade student to understand. The law does, though, require a “signature” on any such agreement. Also, if there are two words I would like to see in such an agreement, they are “authorship” and “ownership.”

Want to have or share ownership or authorship rights in creative works you create either at Work, or At Home? We offer Two Model Memos for Employees to Request 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!

(5) If Your Creation is An Assigned Duty at Your Work, You Should Ask for “Partial Rights”: Even if you create your material on your employer’s time, as part of your employer’s efforts, and using your employer’s resources, there is no reason why you should not ask for proper credit and a share of the ownership of the creation. If you don’t ask, you won’t get. It’s surely worth the effort to try.

(6) We Offer Two Different Model Letters/Agreements for Your Use: Because so many people are unsure of “what to say and how to say it,” and are generally uncomfortable with writing, for a nominal fee we offer from our “Model Letters” section of our blogsite two Model Letters/Agreements regarding authorship and ownership of creations related to your work. One is intended for a creation developed on your own time; the other is intended for a creation developed during your daily work for your employer.

Though they both must be adapted to your particular facts and needs, they can help people move forward with greater confidence. If you are interested in obtaining copies of them for your adaptation and use, simply [click here].

It takes a lot of energy and focus to create something of value, beauty or utility. Creativity is not very common. Nor is perseverance. But even with creativity and perseverance, you must practice prudence if you want to have rights to, and control of, what you create, if it is related to your work. By not protecting yourself, you are effectively giving to your employer all of these rights and control.

There is a way to protect yourself: ask for an agreement that provides, if you are to create something during your own time, and using your own resources, it is “yours” in every way. Alternatively, if you produce something “on the job,” you can also ask for partial authorship and ownership. You may be successful in your request, but one thing is for sure: you won’t succeed unless you first try.

SkloverWorkingWisdom™ emphasizes smart negotiating – and navigating – for yourself at work. Negotiation and navigation of work and career issues requires that you think “outside the box,” and avoid risks at every point in your career. Knowing ways to resolve disputes when they arise is a distinct advantage in navigating workplace life. Knowing ways to avoid disputes is even more advantageous. Learning the “in’s and out’s” of doing so is what we are here for. Now it’s up to you.

Always be proactive.  Always be creative.  Always be persistent.  Always be vigilant. And always do what you can to achieve for yourself, your family, and your career. Take all available steps to increase and secure employment “rewards” and eliminate or reduce employment “risks.” That’s what SkloverWorkingWisdom™ is all about.

*A note about our Actual Case Histories: In order to preserve client confidences, and protect client identities, we alter certain facts, including the name, age, gender, position, date, geographical location, and industry of our clients. The essential facts, the point illustrated and the lesson to be learned, remain actual.

Please Note: This Newsletter is not legal advice, but only an effort to provide generalized information about important topics related to employment and the law. Legal advice can only be rendered after formal retention of counsel, and must take into account the facts and circumstances of a particular case. Those in need of legal advice, counsel or representation should retain competent legal counsel licensed to practice law in their locale.

Need Extra Money? Want to Work “On the Side?” Model Memo Asking for OK to Work “On the Side.” “What to Say / How to Say It.™” Just [click here.]

P.S.: If you would like to speak directly about this or other subjects, Mr. Sklover is available for 30-MINUTE, 60-MINUTE, OR 120-MINUTE TELEPHONE CONSULTATIONS, just [click here.] Evenings and weekends can often be accommodated.

© 2010 Alan L. Sklover All Rights Reserved. Commercial Use Prohibited.

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