Software Development: Who Really Owns A New App?

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Software Development: Who Really Owns A New App?Whether you’re a developer or you’ve contracted with one to create a new application, there’s often a big misunderstanding as to who owns the intellectual property at the end of a software development project.

If you paid to have the app developed, naturally you expect to own it. On the other hand, if you’re the developer, chances are you recycled some code on the current project and plan to use it in the future on other projects.

Open Source Code?

And then there’s the open source issue.

Was any of the code added per a GNU General Public license, Creative Commons license, or other open source license?

As you can see, there’s plenty of room for disagreement about who owns what intellectual property.

Related Article – Software Development Agreement : Who Really Owns The Intellectual Property?

Written Software Development Agreement

Of course, the solution to this problem is to having the project done per a comprehensive app development contract that covers ownership, licensing (including type of license), and any open source issues.

Related Article – Software Development Agreement: 10 Issues To Cover

Your written contract can provide not only for intellectual property issues but also prevent other problems from arising during all phases of development and testing.

Where Should You Get An App Development Contract?

By having your agreement professionally prepared by an experienced software lawyer, you’re likely to get what you want rather than leaving it to chance.

For example, our firm prepares a Software Development Legal Protection Package that’s designed to favor our client’s legal rights while offering a fair deal to the other side. Often the agreement is reused by our client on future app development projects with minimal changes.

Regardless of what you decide to do, whether you’re a developer or paying one, don’t just wing it when it comes to software intellectual property ownership, licensing, and related legal rights. That’s not only bad for business relationships but also an invitation to a lawsuit to sort things out after the fact.

Software Development Agreement – Who Really Owns The Intellectual Property?

By | Copyrights, Intellectual Property, Licensing, Licensing Agreements, Open Source, Software, Software Agreements, Software Lawyer | No Comments

software development agreementWhether you’re a developer or a client, one of the most important things to cover in your software development agreement is who owns what intellectual property (IP) rights.

Surprisingly, most developers and their clients either don’t know or having conflicting views on the subject.

Imagine you’re a client that’s just obtained an advantage in the marketplace with new software. Then you discover your developer now works for one of your biggest competitors on a similar software project.

Or, let’s say you’re a software developer. At the end of a project, the client is happy with your work but makes an off-the-cuff remark about owning the new software lock, stock, and barrel. You wonder if the client understands that’s not the case.

According to Dallas Software Lawyer Mike Young, there are two competing interests at play. “The client wants ownership while preventing the developer from re-selling the software to others,” he said. “On the other hand, the developer wants to keep ownership because some code can be recycled and used on projects for other clients instead of having to reinvent the wheel from scratch.”

So, how do you balance these competing interests in a software development agreement?

get software development legal protectionOne method is to use a combination of licensing with non-competition provisions.

How does this work?

The developer retains IP ownership, licenses the software to the client, and agrees to restrict the purposes for which the code can be recycled. Often, this means the developer is agreeing that for a period of time, the developer will not use the software to compete with the client or recycle the code and sell it to one of the client’s competitors.

What if the developer doesn’t own some of the code used in the software?

The general rule of thumb is you can’t convey what you don’t have.

When it comes to software development, there’s often is some code the developer does not own. For example, a developer’s license has been purchased from a third party, the developer is using open source licensed code (e.g. GNU General Public and Creative Commons licenses), or some of the code has been taken freely from the public domain.

In other words, there may be multiple tiers of intellectual property rights associated with a single piece of software. And if those are not clearly identified in the software development agreement, it’s a recipe for confusion, hard feelings, and litigation.

What if the developer is the company’s employee?

Even if employees are doing software development for an employer, it’s risky to assume the software is the employer’s intellectual property as a work made for hire for two primary reasons.

First, certain criteria must be satisfied before the software is considered a work made for hire.

Second, the employee(s) developing the software may have licensed some of the code, used open source code, or taken code from the public domain.

Employers can reduce these risks by taking preventative steps before development begins. These actions can include written employment agreements that cover works made for hire, implementing employment guidelines to ensure the work-for-hire criteria is satisfied, and establishing a clearly defined project scope of work to identify the coding resources for the project and related intellectual property rights.

IP Ownership Is Negotiable

Whether you’re an independent contractor, client, or an employee involved with a software development project, it’s important to understand the intellectual property rights are frequently negotiable, i.e. there’s no one-size-fits-all standard to apply across all projects.

Before negotiating, work with your software lawyer to identify what you must have, what would be nice to have, and what you can live without. This makes it easier to cut a deal where each party gets what they want from the project.

Software Developer Nondisclosure Agreement: 5 Issues to Cover

By | Software, Software Agreements, Software Lawyer, Technology Contracts | No Comments

software developer nondisclosure agreement

If you’re developing an app, you can benefit from having a signed software developer nondisclosure agreement (NDA) when dealing with clients and competitors.

For example, in a recent lawsuit, a software developer claimed that its rival engaged in misconduct, including breach of a nondisclosure agreement. The jury agreed and awarded almost $44 million.

However, don’t try to put together the contract without the help of an experienced software lawyer if you want the agreement to be enforceable.

Important Issues to Discuss with Your Software Lawyer

When talking with your software lawyer, here are five issues to consider for your agreement (there will be others too):

  1. Choice of Law. What law will govern the NDA if there’s a dispute?
  2. Jurisdiction. Which courts will have jurisdiction to handle a lawsuit if there’s a breach of the agreement?
  3. Parties. Which parties should sign the contract? For example, if there are subcontractors involved in software development, should they be required to sign nondisclosure agreements too?
  4. Liquidated Damages. Will you include a liquidated damages provision with a sum substantial enough to deter breaches?
  5. Attorneys’ Fees. If there’s a dispute, is each party responsible for his own legal fees or do you want a loser pays provision?

Of course, any NDA is only as good as the person signing it. If you’re dealing with someone dishonest (and why are you?), you should expect there will be a breach of any agreements you reach. In other words, due diligence is key before entrusting anyone with information that needs to be protected by a confidentiality or nondisclosure agreement.

Where can you get a software developer nondisclosure agreement?

If you’re looking for a customized software developer nondisclosure agreement to protect you and your business, you may want to have a phone consultation with Dallas Software Lawyer Mike Young.

However, it may make sense for you to invest in our Software Development Legal Protection Package instead to obtain additional levels of protection for your intellectual property.

Telecom Corridor Lawyer: Richardson Texas Business Legal Help

By | eCommerce and Technology, Software, Technology Contracts | No Comments
telecom corridor lawyer services

Are you looking for a Telecom Corridor Lawyer?

If your tech company is located in or near Richardson’s Telecom Corridor*, you need help from an experienced Telecom Corridor Lawyer.

However, chances are the size of your business doesn’t justify hiring the same multinational law firms that are retained by AT&T, Ericsson, Texas Instruments, Fujitsu, Cisco, Samsung, and other large publicly traded companies.

Where to find the Telecom Corridor Lawyer that’s right for your company.

If your business needs help with tech contracts, software development agreements, employment and independent contractor agreements, and/or intellectual property licensing deals, you’re in luck.

Located in the suburb of Plano, Dallas Internet Lawyer Mike Young helps entrepreneurs like you protect and grow their business by making sure transactional matters are handled right.

What if you’re just starting a new venture?

Mike can set up a Texas limited liability company or Texas corporation for you as well as provide you with legal advice so that you can avoid common entrepreneur mistakes.

Is Mike affiliated with the Richardson Texas Economic Development Partnership?

No, he isn’t. This means Mike is able to represent your company whether or not you have anything to with the partnership.

How do you get started?

The first step to retaining him as your Telecom Corridor Lawyer is to set up a consultation at a day and time that’s convenient for you.

You can either talk to Mike on the phone or meet him in person for your consultation at a mutually agreed upon location in or near Richardson, Texas (e.g. a local Starbucks).

Call 214-546-4247 or use the online booking system on this site to set up your appointment. Note that consultations are reserved on a first come, first served basis. If appointment times are filled on a particular day, be sure to see if there are available slots available on other days.

* The Telecom Corridor is located in Richardson, Texas. This should not be confused with Telecom Valley, which is located in Sonoma County, California.

Software Development Agreement: 10 Issues to Cover

By | Copyrights, Software, Software Agreements, Software Lawyer | No Comments

software development agreementIf you’re a software developer, you’ll want to protect yourself by having a customized software development agreement that’s designed specifically for your business.

Why?

If you “borrow” someone else’s contract to use with your clients, chances are you’re (a) not fully protecting yourself and (b) you’re committing copyright infringement because you don’t any of the intellectual property rights to use the agreement (e.g. a license from the software lawyer who created it).

So, what should you include in your software development agreement?

The terms and conditions in your contract will vary because your business is unique. However, here are 10 of the most common issues you’ll want to address in your agreement.

1. Scope of Work. Your contract will cover both what you’re agreeing to develop for your client and specifically exclude work that you will not be doing without additional compensation.

2. Work Change Orders. Because it’s likely that the work involved will be modified during the course of the project, you’ll want to have your agreement include a mechanism for change orders by you and the client. These change orders should describe the additional work, cover compensation for the work, and any alterations to the project’s milestones and deadlines because of the changes.

get software development legal protection3. Subcontracting. If you’re outsourcing any of the coding to third parties (e.g. programmers overseas in India or the Philippines), your software development agreement should make it clear that you have the right to do so as well as cover any restrictions on such subcontracting (e.g. confidentiality agreements).

4. Delivery and Testing. Your contract should address what constitutes delivery and the milestones for each deliverable. With a possible exception for cowboy coding, your development process will heavily influence these provisions (e.g. whether or not a prototype will be provided). As part of these provisions, you should address the client’s rights to test the deliverables, what constitutes acceptance or rejection of a deliverable, and any of your obligations to fix a deliverable that doesn’t satisfy specifications.

5. Payment. How and when will you get paid during the development process? Will the client be required to pay a portion of your fee up front? What milestones trigger subsequent payments? As a developer, it’s in your financial interest to front load the payments as much as feasible so that you don’t have to pursue the client for collection after the project is completed. On the flip side, the client will want to back end the payments in order to ensure your performance of the work.

6. Intellectual Property Ownership. Who owns the software you develop for the client? You or the client? Are you granting a client a license to use the software? If so, what’s the scope of the license? If open source libraries are used as part of the development, that should be addressed to in the agreement so that there are no misunderstandings as to who owns what.

7. Warranties and Disclaimers. What type of warranties will you give the client for the software? For how long? What’s the mechanism for the client making a warranty claim? What warranties are you specifically disclaiming (e.g. fitness for a particular purpose)?

8. Competition. Will you be able to sell the software to your client’s competitors? Can you compete against the client using the software you’ve developed? If so, under what restrictions? Will there be a waiting period or a geographic limitation?

9. Confidentiality. How will confidential information be handled? What constitutes “confidential information?” When the project ends, what responsibilities (if any) do you have for this data?

10. Software Maintenance and Support. Will you have any support or maintenance obligations for the software? Is there any obligation to upgrade the software (e.g. to be compatible with a new OS)?

Of course, these are just some of the major issues you’ll want to address in your software development agreement in order to protect yourself (and avoid unnecessary lawsuits in the process). An experienced software lawyer will customize the contract to meet your specific needs.