Ask HN: My company wants my side project. What can I do?
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.
326 comments
[ 4.7 ms ] story [ 268 ms ] threadMaybe 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.
> 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 don't think this is an option. They can still claim that they want the code because I created something that directly relates to what the company does.
That's a quick way to have a miserable life (getting fired, sued, blacklisted among peers, etc).
At least you are using the know how you gained during your work
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.
This would have been natural but the timing of this could not be worse. I just got a raise (last week) and I doubt they will consider anything more. They gave me a raise because I was doing good work for other things. I've serious doubts that there would be any financial barter possible.
I'll probably the lead for the project and my managers are fine with that. Promotion is something that I've considered either so thank you for that suggestion.
Think "perks" rather than "salary".
Entirely this.
I got burned by this years ago, developing side project that was completely unrelated to the sort of work my employer did, and was not developed using any company resources. But my employment contract specified that my employer had first rights to anything I developed at all during the term of my employment.
From that time on, whenever I'm negotiating a new employment contract, I make sure that any such clause is omitted from it. I've never had an employer completely balk at that, although some have negotiated a middle ground where they get first rights to a time-limited exclusive license to any side project I do that does overlap with their activities.
This sort of thing is why I advise people to actually read and understand employment (and all other) contracts before signing, and to not be shy about requesting changes to them if the terms aren't acceptable.
Also, don't listen to verbal assurances like "that's just boilerplate, we never actually enforce that". That may or may not be true at the moment, but there's no guarantee it will remain true over time. When the rubber meets the road, what the contract says is what will happen.
I was thinking along the lines of "Hey, I periodically do volunteer work for various charities, and I think this clause could hurt them. Could we add in that work not directly assigned to me and is related to a non-profit / charity is excluded from this clause?"
That way, if anything comes up, you could turn over copyright to the FSF or similar organization and you would be covered.
Seriously? Did you not read the contract?
Most contracts specifically say that the work has to be RELATED to whatever you're doing at your day job. Blanket "we own everything" statements should never be accepted, ever.
Italy for example has a blanket "we own everything" statement on the standard collective contract, and to work around that you need to write an agreement and sign it on the side (not on the main contract) or it won't stick in court because all clause against the collective contract are considered vexatious by default and require special care
That's a value judgment that others might not share.
Also, that's easy to say if you have a steady, secure job that pays well. But if you don't, and you need a job else you might not make your next rent payment, maybe you can't be so picky.
Same deal if all the desirable jobs in your area have clauses like that and you can't or don't want to move.
Yes. Early in my career, I had been in this situation a couple of times. What I did then (and would do again) is to suspend any work on such private projects entirely until I can find a job with a more reasonable employer.
https://lists.sfconservancy.org/pipermail/contractpatch/2018...
Software Freedom Conservancy reminded me that everything is negotiable:
https://sfconservancy.org/contractpatch/
Thank you for your answer. Could you please elaborate on this one? What does the exclusive license entails? Do you get ownership back when the time expires?
When the exclusive period is up, that doesn't mean the license is inoperative, only that I am free to license it to others as well.
Note that when I say "I" here, I really mean my attorney. These sorts of things can be tricky, and I am no lawyer. Also, it's very hard to make this sort of thing foolproof -- if an employer wants to screw me, there are a few ways that they could.
Seek legal advice from professionals.
California, for example, does not allow contracts for ownerships of things done on your own time, your own equipment and not related to your employer.
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.
A huge part of that is how to structure an open source project so that it can't be taken from the community. Basically a combo of GPL and taking community contributions without having them assign copyright to you is the most full proof way to keep something open source.
To answer your question, if they own everything they can relicense it any way they see fit. Only by having your code mixed with others' that you don't own can you practically protect it from forced relicensing.
https://legacy.gitbook.com/book/hintjens/social-architecture...
Sorry, but your advice is refuted by research. Both GNU and Apache ask developers to sign contributor licensing agreements. For Apache, see “ASF Contributor Agreements”, https://www.apache.org/licenses/contributor-agreements.html. For GNU, see “Copyright & Compliance” at https://www.fsf.org/licensing/.
The Wikipedia article about Contributor License Agreements cites this article by OSS Watch, http://oss-watch.ac.uk/resources/cla. This is the first time I’ve heard of OSS Watch, but they might be a helpful source of legal advice based on their About page, http://oss-watch.ac.uk/about/
I have issues with the GNU assignment. It means that we're reliant on future owners of the GNU project to not ever relicense the codebase. A single owner is a single point of failure.
The FSF is arguably something a bit unique. But most of the point of a CLA is to give a company/organization ultimate control over a code base so that it can dual license, etc.
There are also arguments against them in many cases, including that they create friction for new contributors. "Oh, I have to sign this agreement which means talking to my company's legal staff? I think I'll just pass."
The parent is also probably right that GPL with no CLA makes it much harder to change a project's license. This actually came up when GPL v3 was released. As it turned out, Linux apparently didn't want to change Linux from a v2 to a v3 license. But there were also legal questions about whether he could do so by himself even had he wanted to. (Though Eben Moglen argued at the time that he maybe possibly could have for various arcane reasons.)
ADDED: I recorded a podcast on this and related issues recently: https://podcasts.apple.com/us/podcast/open-governance-chris-...
In the podcast episode, the guest does mention people are moving away from CLAs. He goes on to say projects are adopting a “Developer Certificate of Origin” model. I found an article that helped me start to understand differences in these models: “CLA vs. DCO: What's the difference?”, https://opensource.com/article/18/3/cla-vs-dco-whats-differe....
Your employer isn’t seeking a copy of your Apache 2.0 code, which they already have, they’re seeking transfer of copyright ownership.
It really does sound like you’d learn a lot from talking with a lawyer, maybe one recommended by an open source foundation. Lots of lawyers have a first meeting is free policy, so schedule meetings with a few lawyers. Pick the one you like best, or pick none.
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.
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.
The way things work at this place, I'll probably end up maintaining the product until I leave my job.
The reason for not transferring over is that once I do that, they will essentially not let me create features that I think can be done better using my product, because they exist in some other product.
I agree with others that talking with one or more lawyers should be a high priority.
It sounds like there's a lot of "politics" that you're unaware of or not mentioned. Is the project actually in competition with one of your company's products? If they're an open source company, how do they handle community governance and contributions? Do they normally make contributors sign over copyright, like the FSF?
Why do you think there would be conflict over features?
sounds like you created a competing product and made it open source. that spells trouble. Get a lawyer. IANAL
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.
The company overall is quite stingy and I doubt that they will do this part. I'm trying to figure out what other things that I can ask for other than financial compensation. Someone mentioned Promotion and a positive review is something to ask for, which makes some sense. The only problem is according to my review, I'm already exceeding expectations. So, this project doesn't buy me much.
Overall, they are fine, and kind of, want me to drive the project, essentially because there is no one else who can do that job.
* The company agrees to pay you for adding some extra features to the project
* You keep control and exclusive rights, but give them a license to use it (but not transfer it to others)
Edit: even if they legally can claim full ownership of the project, you have the full right to resign and go work on something else after they do so. And if this is not what they want, you will have pretty good chances negotiating a non-exclusive deal instead.
One last piece of advice:
=== DO NOT AGREE TO ANYTHING WITHOUT A LAWYER ===
Many companies would consider it business as usual to agree on your terms verbally and then slip in a clause in the contract that would completely change the balance in their favor.
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.
1. It never seems to be accompanied with advice on how to find the appropriate kind of lawyer. 2. It almost always seems to ignore the fact that lawyers are expensive. Sure, there are times when that cost is warranted, but I don't think it is right to ignore it. For example, in this case, it is probably only worth consulting a lawyer if the amount of compensation on the line is significantly more than the amount the OP would pay the lawyer. And what if the person you are advising can't afford a lawyer?
Also, concerning your metaphor, I would not just immediately say "find a programmer". I would find out what kind of website they wanted, then depending on their technical skills and what they wanted (and how close a friend they are) I might teach them how to make a website themselves, or point them toward more user-friendly tools to create websites. I'd only suggest they hire a web designer if they needed something really complicated or didn't have the skill or time to learn how to make a website themselves.
If a company wants to formally acquire the rights to the IP.. it's safe to say it's worth something.
If you can't afford a lawyer you might as well roll over right now because that will be the end game.
The idea that some advice given in an online forum would reduce the need for finding a lawyer is akin to taking medical advice from a forum. You have no idea what the qualifications/experience/jurisdictions are of the people giving you advice so it might be good/neutral/detrimental.
Get a lawyer, one that specializes in IP and if possible to find those skills in one person as well as in employment law in your place of residence.
In the UK, most of my lawyer friends would tell you that lawyering up is the last course of action you want to take, as it tends to make issues more complicated, expensive and combative, though you might want to be careful what you admit / agree to.
My wifes a solicitor. :)
* OP is in the wrong and employer can't afford to pursue further. OP loses a lot of reputation as word spreads.
* OP is in the wrong and employer can't afford to pursue now. Five years down the line, when Oracle acquires employer, OP is sued for five years of damages.
* OP is in the right, but employer's lawyer crafts a very intimidating and compelling legal letter. OP backs down, having blown the relationship with the lawyer, loses rights, and is fired two months later.
It's helpful to be able to say "no" with conviction if one is right, or not press an issue if one is wrong.
Your employer doesn't even need to know you consulted a lawyer.
For the record, I've used solicitors before and it was a ball-ache. The first thing they tell you is the judges want you to have at least made an attempt at discourse before you can go to court.
In the UK you're entitled to 1 hour of free legal aid, so it's hardly expensive to consult with one who can direct you to the right person and place.
Not sure if the incentives are the same in the UK, but in the US, most lawyers retained in matters like this work for the client.
In that lawyers advise, the client decides, and then the lawyers attempt to realize the goal the client has chosen (if they decide to keep working for them).
Most people in the US seem to look at legal counsel as "Do what the lawyer says," when it's actually "listen to what the lawyer says, ask about alternatives, and then choose the course you want to take."
Or as I've heard it explained: a lawyer's default is to counsel the courses of action that will allow them to win a hypothetical jury trial two years from now.
When in reality, most things never get there, and some optimal courses of action for trial are antagonistic in a pre-trial context.
Listening to doctors instead of carefully reading forums would have probably left me seriously crippled. Doctors hold no real liability, nor do they have any real expertise outside their (very narrow) problem domain.
There is no substitute for doing your own research if you want something done right.
As for doctors not having real expertise outside their (very narrow) problem domain: that's precisely why you want to see them if your problem is in that narrow domain.
Finding expert doctors and relaying updated information to family doctors doesn't work too well either.
1) The employment agreement 2) Understand the degree to which the specific project overlaps with the employer's business 3) Etc.
That takes a conversation you don't want to have online.
But yes, I definitely to seek legal advice from forums, Nolo books, and similar. Self-serve law is not a bad idea in most cases, despite advice to the contrary. Just not in THIS case.
No, if I have a medical problem _that is serious enough that it is worth the cost_ I go to a doctor. I don't go to the doctor for every cold or headache I get. Granted the OP is actually a case that might be worth that cost, but I've seen similar advice for much smaller things. I mean, I've asked questions about IP for my hobby open source projects, from which I don't expect to ever get a penny, and been told to get a lawyer. Or in this case, say compensation was off the table, is keeping ownership of the project worth hundreds or thousands of dollars for consulting a lawyer? Maybe. Only the OP would know that. And even after consulting a lawyer it's hardly a sure thing.
I'm not saying you should take legal advice from forums. My problem is with the "Always always always talk to a lawyer." Maybe you have enough money to talk to a lawyer every time you have a legal question and see a doctor every time you have any kind of malady, but not everyone does.
And I guess part of my complaint is just that such an important service is so expensive. It leads to a situation where the well off can hire lawyers to consult them on things like employment contracts, but those with less money can't, which makes it easier to exploit them.
If you screw up your legal diy the consequences are much much worse, and often unfixable.
Your #2 reason is tricky because individuals who need the advice to seek out a lawyer already don’t understand the value of having a lawyer, so they have no way to gauge the financial cost of hiring one. That makes a lawyer seem very expensive, when in reality sometimes the risk of not having one is much greater than the cost.
A few years ago I had a side project I wanted to turn into a company, but not enough money to do it full time. So I applied for a job. The employment contract they wanted me to sign had a non-compete that was vague enough that my side project would be in conflict with my job.
I was very worried about spending $2k to hire a lawyer to write an exclusion clause into my employment contract. It seemed like a lot of money to me. But I did it, and for the money I got a single paragraph of text that excluded my company from ever being considered “competition”. (Actually the real value was not the text, it was that my employer knew the text was written by an employment lawyer, so they accepted it and didn’t push back.) Later I left that job to start my own company, and then sold it a few years after that. Without the clause, I could have risked the entire thing. In retrospect, it was some of the best money I ever spent, worth every penny.
https://www.lawson-weitzen.com/attorney/bauer
He gave me terrific advice on a similar issue many years back, and I've gone to him a few times since. I've never retained him: our conversations were always about knowing how to interpret employment contracts, understanding options, and coming up with a negotiation strategy. After those consults, I could go it myself.
A good lawyer won't drag you into litigation. Good lawyers are rare, but the goal should always be to appear professional and to preserve relationships. If you have the rights to your code, you should be able to maintain them without burning relationships with your job. If you don't, you should hand the rights over without a fight (or negotiate for rights, but understanding you'll need to compromise something in return). In either case, you'd like to keep working there, you'd like good references later, and you'd like your employer to stay in your network.
You can't do that unless you understand your legal rights, and unless you have an idea of what tactics you should take.
A good lawyer will run you $300-$600 for a conversation (1-2 hours). A bad lawyer will escalate to a conflict, and run you tens or hundreds of thousands of dollars.
Keep in mind law varies by jurisdiction. I don't know where OP is, so this recommendation may be moot. I've worked with many lawyers. I have no conflict-of-interest (my relationship with Bauer is limited to a small number of ~1-hour consults).
The cost argument is a fair one, and I think that's worth considering. In this case, though, OP has indicated that this is a project that he feels has some amount of value, so it's worth spending $300-500 for a consultation with a lawyer. I'd try to look at it from an expected value perspective - even if paying $500 only has a small chance of improving the outcome of your negotiation/case, if the value of the thing you're negotiating over is $25000, it's worth spending. If the value of the thing is $600, then don't bother.
In terms of finding a lawyer, upcounsel.com, avvo.com or referrals from friends are good places to go.
Eg. Where would the internet be if only programmers built websites?
And when you sit down with the lawyer, make sure to bring your employment contract and IP agreement. They'll need those to give you any informed opinions.
He needs someone who understands the law and the specifics, and who has his interests in mind.
We can't even begin to think about the answers to this question with knowing what state the employer and/or poster are in. Nor can we begin to think about it without the specifics of the application and the field that the employer develops in. The ultimate conclusion of this will ultimately boil down to minutiae. Minutiae that we are neither privy to nor have the knowledge or experience to reasonably discuss.
I think what OP needs are good resources so that he can educate himself as much as possible. Yeah he also needs a lawyer, if this is that important to him, but being informed will be a force multiplier here.
in my experience people are generally shity when you ask for legal advice online but you could try that. For example stack exchange has one but you'll probably get condemned on there instead of getting helpful advice.
An out-of-the-box idea might be to find a paralegal on FIVERR and ask them to dig up resources to read up on.
Again I apologize for being such a jerk about your suggestion. I'm a terrible person.
If he can't talk to a lawyer, he's going to lose. Period. Maybe very badly. After having already screwed up, now is not the time to half-ass it.
You're not a terrible person but you've given absolutely terrible advice.
> You're not a terrible person but you've given absolutely terrible advice
You didn't read my advice correctly and I place zero value in your opinion about me being a good person or not especially considering you thought you had enough information to even bring up the topic based on one short internet comment.
As for the other thing, looks like you're intentionally picking a fight. Therefore, out of deference to your better logic, I withdraw my comment that you are not a bad person.
He, and you, may not know that you do not always need money up front to engage the services of a lawyer. Many lawyers extend credit to their clients or allow clients to condition their fee on a successful outcome (a contingent fee). Depending on the desired outcome in this case, such an arrangement may be easy. For example, if OP wants to arrange a sale of the IP to his employer, then the lawyer’s fee could be paid from the proceeds. Some lawyers also take credit cards.
Also, an initial consultation to decide if OP wants to hire a lawyer shouldn’t cost anything. OP won’t get any free advice, but he should get an idea of how a lawyer could help in his situation.
(2) Contingency isn't all too helpful unless you definitely go for litigation. OP definitely shouldn't go for litigation here.
Ideas are a picodollar a dozen. Why don't you try this one and tell us how it works out? Or, at a minimum, find out if you could even theoretically hire a paralegal on Fiverr?
Attorneys have a legally enforced monopoly on legal advice because, well, they write the laws.
Second, what a nasty little comment you've constructed.
Third, you've made quite a few assumptions that I have zero interest in discussing with you (see the previous paragraph).
If you'd please read https://news.ycombinator.com/newsguidelines.html and use HN as intended, we'd be grateful.
Your answer is dangerous and your attitude is flippant. You need to seriously rethink both, or you're going to get yourself or someone else in hot water someday.
I probably should have cleared this out in my original post (my bad) that I do not wish to pursue the legal route. I personally feel that in my case, it will just drain everyone's energy for not much gain at the end. Also, personal relationships matter to me as well.
I'm trying to find ways to get compensated for the time and effort I've put into it. If not financially, then in some other forms. But I don't have any ideas.
If you don't want to spend money on lawyers, at least read all relevant laws (which is important even if you have lawyer around you).
It's also better if your company doesn't know about your preparation, as it can be used as defence weapon in the negotiations only if you would get a worse position than what you have rights for anyways. Preparing in secret also helps you get more evidence for your case.
The way you use that leverage is then explain why you feel something is not fair. In a professional context, you can explain your position in legal terms when you take a compassionate, kind stance, smile and analytically explain the situation from both sides.
It's no more different than handling a code review.
Now, two things can happen: Either your employer is amazed that you both created a new product AND can navigate business negotiations. This is good for your career (unless your employer is an idiot).
Note that creating a new product that people love increases your market worth tremendously (unless you are already at a fairly well compensated level).
Traditionally the simplest way to compensate employees has been to give them a raise. Hint - you could ask this :)
The funny thing a higher pay grade does is that suddenly management will respect you more (we pay him x dollars so he must be awesome).
Or, the second case: you find out your employers 'mr. Niceguy' culture is actually a charade to fool people working at below market rates. At which point the fate of your sideproject totally depends on the legal feedback you received. And it would be better for you to find a better employer.
There are really good books on negotiation and influence. I suggest you read them when you have the time. Examples: Cialdini, 'Influence'. Voss, 'Never split the difference'.
The employer might be under the impression that all the terms in the employment contract they pulled off FreeLegalTemplates.net are enforceable when they aren't. Going to a lawyer first gives you the ammunition to politely point out that you are in fact the one in the right here.
You may have to reset your expectations about walking away with both compensation AND control.
You can't have peace unilateral.
If relationships where good they would have suggested a fair buyout.. Or allowed you to build said product on company time.
If you don't want to do even that then my advice to you would be to hand over the code, fork it, leave this employer and call it a day.
A 30 minute session with a lawyer will give you much more insight in to how to deal with this situation more than what you can learn from an internet forum.
You should do so as well, to be on the same footing. This lets you negotiate with confidence, you'll understand your BATNA and the terms of your contract with the business.
The tricky part is probably finding such a good lawyer and coming up with the money to pay them.
Edit: to add to you second point: If "legal" and "fair" are so different, that's exactly why you can't rely on your intuition but need to consult an expert.
This. Anything you say. Anything at all. Can. And will be used against you in a court of law. Your job wants your code. Personally I would lawyer up and start applying for new jobs elsewhere and ensure they wont pull the same. Just never work on code from their hardware on their resources (internet, power, etc).
As much as I hate to say it, that doesn't sound like a side project. That just sounds like overtime.
As an employee, if you put a lot of your business and technical knowledge (that was acquired while on the job) on a large side project effort without your employer's consent, you're playing with fire, because you may be transferring business advantage from your employer to the outside world, including the competition. You put yourself in a position where you could even get sued if things go badly (specially if your project is a potential money maker)... See the case of the Nginx author, who just got himself into similar trouble...
In conclusion, I think your safest bet is to, as everyone is saying, talk to a lawyer... not to threaten the company, but to protect yourself and hopefully come to a friendly agreement at the end!
In hindsight, I also made some mistakes in how I went about evangelizing it.
It sounds like the author implied the company actually had something to do with whatever it is. That definitely makes it an unsanctioned overtime project rather than something separate like a side project.
Is it overtime if you were never paid for it? How does unpaid work have to be 'sanctioned'?
Sadly, for programmers in the US, overtime is essentially always unpaid. When you e.g. hear about game developers doing 80hr/week crunch time, they're not getting paid extra for that.
Going that route, maybe the company could pay for the work done on the project.
If the company really want to act in good faith, as reading between the line I assume you believe they do, they would have opened with an offer or some sort of compensation.
Instead they flat out asking you to transfer your work over means they knew and has already calculated the consequences.
Sorry to be cynical, as others have point out go and talk to a lawyer.
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.
I wish I knew myself better.
Maintenance and taking the product forward will naturally become part of my job, so that's a given (and I'm happy about it).
What can I ask more for is what I'm trying to figure out and having a hard time.
I'm generally creative with software and products but I'm really bad when it comes to negotiations and figuring out a good barter.
I absolutely don't want to take the legal route and want to work something out mutually.
> I absolutely don't want to take the legal route and want to work something out mutually.
You know, a good lawyer is both good at listening to his client’s goals and good at negotiating. Such a lawyer would avoid a “scorched earth” outcome, if that’s what you want, and also negotiate a better deal than you could on your own. Lawyers who specialize in business transactions are sometimes called transactional lawyers (as opposed to litigators, who specialize in asserting claims in court).
If you are in Canada I can recommend someone who is good, former software engineer and does IP law.
It doesn't cost them anything, and in the future if you leave it's surprisingly useful if that is a direction you want to go.
I know you are getting a lot of advice saying "get a lawyer". That's up to you.
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.
"As part of your employment agreement, Google most likely owns intellectual property (IP) you create while at the company. Because Google’s business interests are so wide and varied, this likely applies to any personal project you have. That includes new development on personal projects you created prior to employment at Google. However, we understand and sympathize with the desire to explore and ship technology projects outside of Google."
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.)
FTFY
On some of the key terms in a contract: explain me the situation, give me the options and the associated risks, and then let me make the call on what I (as the client) find acceptable. I've never seen something blow up when operating in this way.
If they just want the codebase it's a simple OSS fork, why would they need your permission?
My product, unintentionally, solves a lot of problems for the enterprise product that my company sells.
So what exactly do they want when they control the codebase? Do they want to make it closed source, or just more input on the development.
Unless they want to close the source, it sounds to me just like a question of negotiation of aligning your and their interestes and it sounds like you could at least partially support your own product on work time.
And of course, you need to balance any theoretical gains by winning a legal argument with your company with your long-term employment interests.
There are special, state-wide rights that you have in CA that you cannot sign away, some of which apply to work like this.
and the invention-assignment stuff is even more direct, here: https://thebusinessprofessor.com/knowledge-base/california-l...
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.
Nothing about that is clear without knowing the relevant laws of wherever this is, the contract, the circumstances of development, and who knows what else. This is why legal advice from random internet strangers is a bad idea.
> There should be no lawyer involved with this cause it’s not a legal negotiation.
The very first thing you should learn about negotiation is that you never walk into any negotiation until you know your BATNA. How do you know your BATNA in a situation like this? You talk to a lawyer!