Internally document industry IP agreement practices

[mlinksva]

@seanlee14 recording side project I mentioned. Search for examples of:

• Employee IP Agreements that have been made public from other companies
• Employee IP Agreements provided as templates, particularly for software industry
• Employee IP Agreement terms, gist but not full text of which have been revealed in online discussions, eg Google: https://news.ycombinator.com/item?id=1969979 https://www.quora.com/Does-Google-require-that-employees-grant-them-the-copyright-to-all-code-they-write-while-employed-by-Google-or-are-employees-allowed-to-own-their-own-non-commercial-side-projects/answer/Theodore-Tso-1
• Law review articles giving review of or recommendations for current practice for employee IP agreements; http://home.sandiego.edu/~lobel/ one probable author

Purpose: [in]validate https://github.com/github/balanced-employee-ip-agreement#how-does-beipa-differ-from-other-employee-ip-agreements

Many employee IP agreements are very generous – to the employer. The employer gets control of everything the employee creates during the period of employee, 24/7, and sometimes anything created before the period of employment, and sometimes control over what a former employee can create (through "non-compete" terms). BEIPA only claims control of what the employee creates during the period of employment, and only creations made for or relating to the company's business. There surely are other "balanced" employee IP agreements in use. We hope so, and encourage progressive companies to share their agreements and lessons.

[mlinksva]

@seanlee14 thanks, yes this is the kind of direction. For each of the agreements that you found, could you note in your overview document whether they include terms for:

• non-compete
• communications retention (see "IP Protection" potential FAQs #7)
• help with enforcement after employment (also "IP Protection" potential FAQs #7)
• how they treat pre-employment employee IP
• whether and how they explicitly carve out anything the company doesn't own, created during the period of employment?

Separately, I'm wondering how much the GitHub IP Agreement differs from/is better for employee than California labor law, referenced in one of the links you found, http://www.leginfo.ca.gov/cgi-bin/displaycode?section=lab&group=02001-03000&file=2870-2872 and how California law differs from other states in this respect. Can you find any comparison of state laws on employee IP? (I imagine GitHubbers must have researched this ~3 years ago but not sure we have records.)

[mlinksva]

@seanlee14 thanks. I made a PR #12 based on your research. Do you think it increases accuracy of the FAQ?

I'm still not sure what the standing practices are regarding the bullets I wrote above (non-compete, communications retention...). Do you have any sense of these specific items based on your research?

[seanlee14]

@mlinksva yes. I think the addition of the phrase including "allowable by law," makes the language more accurate.

I can't seem to think of any negative implications of BEIPA's communication retention under 7.0 IP Protection especially because the clause restricts the communication to those related to GitHub IP.

Non-compete agreements are not void, [EDIT: not valid] in California except a few statutory exceptions, i.e., selling an entire business. Business and Professions Code Section 16600. California Supreme Court affirmed section 16600 in Edward v. Arthur Andersen & Company 44 Cal. 4th 937. This holding seems to be effect even to non-California employee working at a California Company.

It appears that California is an outlier re its strong stance against non-compete provisions. In many other states, as long as the non-compete provisions are "reasonable," measured by balancing many factors, the provisions are held to be valid.

[mlinksva]

To summarize:

• https://www.lawinsider.com/clause/inventions
• https://www.lawinsider.com/contracts/tagged/and-invention-assignment-agreement
• https://www.cooleygo.com/documents/form-employee-confidential-information-inventions-assignment-agreement/

[mlinksva]

Someone should do (or point to one that has been done) a systematic analysis of employment agreements in use and IP, but in general I think the characterization of [un]balanced is true. Other employee IP agreements are exclusively about protecting the company's freedom to operate, the only balance given to the employee in order to comply with state or other jurisdiction laws. This includes any attention to making agreement understandable by non-lawyer employees.

Closing this but welcome more detailed or even better contrary analysis.

[mlinksva]

A few other sources.

https://ssrn.com/abstract=2517604 (currently linked from the README) includes bits from Google's agreement

IP agreements occasionally discussed on HN eg https://news.ycombinator.com/item?id=13286208 (question concerning Amazon's, but very general) and tons in https://news.ycombinator.com/item?id=13142327 discussing https://www.joelonsoftware.com/2016/12/09/developers-side-projects/ which says "The only difference is in the stance of management as to how hard they want to enforce their rights under these contracts." Or the contract itself could be balanced.