They Made Me An Offer I Couldn’t Refuse

by Jens Alfke ⟿ April 13, 1997

System Software were looking for a Post-It Notes™ type of program for System 7.5. They were already buying several other utilities — including Find File, Scrapbook, SuperClock — from third parties, and offered Antler Software (me) the same lump sum deal for the “Antler Notes” utility I was working on. It was a nice piece of change. I was happy.

This came to the attention of certain people in upper management, whose conclusion was (I’m paraphrasing here) “Why are we going to pay for this? This guy works for Apple — we already own his program!” You can imagine an evil cackle here if you like; I certainly did at the time, although I’ve mellowed a bit since.

For a while it looked as though Apple was going to get Antler Notes / Stickies at no cost — wotta deal! As it happened, however, some of the nice people mentioned earlier in this story arranged for me to get a bonus, not officially in any way related to Stickies of course, but it made me feel better.

I now undestand the Marxist concept of alienation from one’s labor much better than I did before…

What The Law Says

The worst part of it is that they were right. According to US labor and copyright law, a worker’s employer owns anything the employee creates that relates to the business of the employer, regardless of where, when and on whose equipment the employee creates this work. If you work for a high-tech company, remember that “Proprietary Information Agreement” you almost certainly signed when you started? It probably says something like this:

I hereby assign and transfer to the Company my entire right, title and interest in and to all Inventions, whether or not protectable by patent, trademark, copyright or mask work right, and whether or not used by the Company, which are reduced to practice, made or conceived by me (solely or jointly with others) during the period of my employment with the Company, which relate in any manner to the business, products, technologies, techniques, processes, services or research and development of the Company.

However (and these agreements usually mention this in an oh-by-the-way manner near the end) this sort of thing is usually somewhat tempered by labor law. For instance:

Section 2870, California Labor Code. (a) Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either:

  1. Relate at time of conception or reduction to practice of theinvention to the employer’s business, or actual or demonstrably anticipated research or development of the employer;
  2. or result from any work performed by the employee for the employer.

Most of this is pretty straightforward — work at home on your own time on your own equipment and don’t use secret knowlege from work — except for the question of whether your “Invention” relates to your employer’s business. While I haven’t heard or read any authoritative analysis of this, or looked at precedents, most of the (non-lawyer) people I’ve talked with interpret this fairly pessimistically; that if you work for a company that makes products for platform X, anything you write for platform X would be covered. If anyone reading this has more information or experience, drop me a line.

What You Can Do

If you talk to your company’s lawyer or legal department early on — before you start your project, or at least at a time that you can later plausibly claim not to have started it on, and yes that would probably require “correcting” file creation dates — you may be able to get them to exempt a specific project. You’ll need to convince them that your project isn’t something that they would ever consider doing as a product and wouldn’t take away from their business or reflect badly on the company. Get this in writing from them, with all the necessary legalese.

Another way to take care of this stuff is when you begin your employment. Every “Proprietary Information Agreement” I’ve ever seen includes a “Prior Inventions” section where you can list existing inventions of yours that will be excluded from the Agreement and remain your own. You should absolutely list every project that you’ve either completed, are in the midst of, or started once and never finished. A friend of mine had a clever idea: he also listed several very vague descriptions of things he thought he might want to work on someday and gave them code names. Then, when he really did start to work on something that fit the description, he gave it the appropriate code name and it was already exempted. I don’t go so far as to recommend this technique, but it’s certainly interesting!