2

For the current situation I would like to know if I am morally wrong, not whether I would win in a court room. So it's primarily opinion based, but that's the point: I don't believe I have done anything wrong but the other party clearly does so I'm starting to wonder and looking for opinions.

I am a freelancer who worked mainly for one company, company A, for a number of years. I have some small projects on the side that have recently become significantly larger, so I have stopped working for company A. During my last months at company A, I made a template that is quite useful to clients as it helps them to comply with some aspect of a law. I never invoiced them for the time spent on making the template. I never said I would use the template elsewhere, I never said I wouldn't either.

So company A has been using this template, but only gave it to selected clients. In general they believe it's necessary to not share templates because they believe it sets them apart from the competition and thus represents real money.

I have also been using this template: I put it on a website and regularly distribute it at training sessions I give. I also put my logo on it. Company A saw this, and now claims I am not allowed to use the template because it's theirs.

-- full disclosure --
When I started working on the template I talked about it to one of the managing partners of company A and she pointed me to some good resources that helped me make the template. Another employee also spent an hour or two improving the template, based on my instructions.

Am I right in believing I did nothing wrong by distributing the template freely with my logo, or is company A correct in saying the template is theirs and I have an ethics problem? (yes, those are their words)

  • Did you sign an NDA with Company A ? If yes, then that template probably falls in the scope of confidential information. – Harry Cover Mar 31 '17 at 9:33
  • Who owns everything else you did as projects for Company A? If they own that, because of contract terms, or "understanding", or local legal conditions, then they could reasonably expect to own that as well. If you own, and continue to own, the work you did on their projects, then they shouldn't have any expectation that the template would be somehow different. – Gypsy Spellweaver Apr 2 '17 at 1:42
  • Contract I signed contained no IP or copyright clauses. – user3244085 Apr 3 '17 at 19:35
  • @Harry Cover: NDA's do not by default cover IP or copyright but confidentiality. So any NDA in itself cannot be enough, it will always depend on the content. In this case there is only a generic contract which contains confidentiality clauses, but nothing on IP or copyright of material. – user3244085 Apr 3 '17 at 19:36
  • You should just comply with their exclusivity demands . . . just as soon as they pay you the $50K development fee. – Doug.McFarlane Apr 4 '17 at 20:31
3

You are no longer at Company A, correct? You have nothing to worry about legally and they know it which is why they used the word "ethically". They sound like petty bullies to me and if an excel template gives them such an itch then they have bigger problems with their company. If it was created by someone else there and you took it, that's different, but you made an excel template, got some feedback and made some adjustments. It's a template, not a bunch of data on a template.

  • 1
    I am no longer with company A indeed. So far they haven't threatened legal action and I can't imagine they would. I don't feel intimidated, but I am bothered by the possibility that I am being a jerk to them :) – user3244085 Mar 31 '17 at 5:10
  • 1
    You can open a new excel spreadsheet and create that template again, yes? Then there is nothing proprietary there. You got some experience and knowledge at the company and you can't be expected to leave that experience/knowledge behind. If that were the case there would be no reason for a resume/cv to exist because no one would ever have any experience. I have been the manager that left a company and the one that ran a 60 employee $10M company and people come and go. I have been on both ends of the stick. This is not uncommon, nor is your situation. It should be looked at from both sides. – Entre Preneur Mar 31 '17 at 14:50
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My opinion is that Company A is correct. Possibly even legally, but I am not an attorney.

By your own admission, Company A, or its employees, assisted in creation, development, and improvement of this template making them a co-creator. It would be a reasonable expectation that Company A was improving the work for their benefit and not for distribution. You did not create this template solely on your own, which means you do not own the template solely on your own. In fact, it is entirely possible that you could not have created the template in its current state without Company A's involvement. And, as with all creative ventures, would need permission from everyone involved in the creation before the work can be distributed.

They have no right to prevent you from using the template yourself since you also assisted in creating it, but they may have a right to prevent you from sharing the template with other, possibly competing, companies. Distributing it in training sessions, to me, is a tad over the line. You are essentially making it available to anyone and everyone. If Company A relies on this as a business asset, they may be correct in feeling you are devaluing that asset.

Strict legal ramifications would come down to the terms you were governed by when working for Company A and exactly who did what. For example, a work-for-hire agreement clearly means they own everything and you own nothing.

  • Good answer. It's not what a freelancer (like myself) 'wants' to hear, but +1 for pointing out that the template at the very least is a collaboration with company A – morsor Mar 31 '17 at 7:05
1

I don't know where you are but in Europe, in general, the law works like this:

  1. If you are an employee everything that you produce when you work for a company it's intellectual property of the company. You have no rights to reuse anything.
  2. If you are a freelance (an external indipendent company) everything that you produce for any of your clients it's your intellectual property, and your clients acquire the "licence" to use it. Unless you sign a contract where you state that you sell the "licence of use" along with the intellectual property of the product/software/etc, or you sign a contract where you state that your product will be for exclusive use of the client.

Now in case #2, you are allowed to sell (for example) the same software you developed for client A to clients B, C, D, ...

But in your specific case is more complicated because you declared that someone from the company helped you in some way, in this case the final product is a team work and is not from your exclusive work.

In my opinion, considering the case #2, you can reuse/resell the parts of the work that were made exclusively by you, and you are not allowed to use the parts that were made by others.

Please Note: I am not a lawyer and I'm not the best also with english, so don't take what I wrote as granted, it's just my personal (local) experience.

  • Yup, that's what I was looking for. What I am missing in the answers is the attention to the fact that additions by company A were done on my instruction. Also, I feel that the fact I am not selling the template but making it available for free should matter... – user3244085 Apr 3 '17 at 19:32
0

This sounds like a work-for-hire concern. I'm not an attorney. If you're in the US, then the Copyright Office has this spelled out pretty clearly here.

In particular, this section:

Section 101 of the Copyright Act (title 17 of the U.S. Code) defines a “work made for hire” in two parts:

a) a work prepared by an employee within the scope of his or her employment

or

b) a work specially ordered or commissioned for use

1. as a contribution to a collective work,
2. as a part of a motion picture or other audiovisual work,
3. as a translation,
4. as a supplementary work,
5. as a compilation,
6. as an instructional text,
7. as a test,
8. as answer material for a test, or
9. as an atlas,

if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. 
  • based in Europe. And I was more hoping for an opinion and moral standpoint, I'm confident I have nothing to fear from a legal stand point. – user3244085 Apr 3 '17 at 19:34

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