An employer versus an employee and a competitor - who will win the intellectual property dispute?

Based on real events taking place everywhere and in the framework of the controversy here

This story began quite corny. Employees while working for a certain company created a program that was successfully sold. Then they founded their own company and began to do what they can do best - they continued to sell the same software. The former employer was indignant at such an approach to competition and tried to prohibit the use of “his” product in “alien” interests. The authors held exactly the opposite opinion. Noticing that the issue is not resolved peacefully, the employer is suing. Here you have a fairly typical case from judicial practice.

Who is right? Will the court hold authors accountable or take their side?

Of course, we are interested in what the court decided. Who can’t wait, can follow the link and amuse his curiosity. But we do not advise yet, because it is much more interesting to consider more fundamental questions: how did the parties to the conflict reach a direct confrontation? Was it really necessary to bring to court? What are both sides miscalculated globally? And finally, how can one not get to such a life?

Let's figure it out!

The moral side of the issue is left out, although it is certainly interesting. However, based on the materials of the case, we can only speculate on the motives of both parties, and we will not do this.

But the solution of the issue in the legal plane will depend on several factors. Let's look at them and see what the cause of the conflict was?

1. Wrong place.

Yes, we are not in America. There, for example, everything would be simple. Under US law, the results of employees' intellectual activities are automatically transferred to the employer. It is incredible, but true: slavery was canceled, but the remnants remained.

Our country is free and the legislation does not so strictly defend the interests of the employer. The issue is resolved depending on certain circumstances. And they are not always easy to install.

In Russia, it is not easy for an employer to obtain an exclusive right to a work.

To do this, he needs to fulfill a number of conditions:

1. the work must be created within the limits established for the employee (author) of labor duties - Clause 1, Article 1295 of the Civil Code of the Russian Federation;
2. a labor or civil law contract between the employer and the author should not provide otherwise - clause 2 of article 1295 of the Civil Code of the Russian Federation;
3. the employer, within three years from the day when the official work was placed at his disposal, must start using it, transfer the exclusive right to it to another person or inform the author about keeping the work confidential - Clause 2 of Article 1295 of the Civil Code of the Russian Federation. Otherwise, the exclusive right to an official work shall be returned to the author after three years.

Usually the puncture is already at the first point. An employer cannot do without a competent labor contract and detailed job description. Without them, the court has no chance.

Consequently, with our widespread negligence regarding documents, the employee is in a better position. According to the standard labor contract and the formal job description (if there is one at all!), The employer will not be able to prove that the work was created within the scope of labor duties. But the author may well insist on the illegality of the use of his works and decisions, and even get compensation. For example, as in the case of the Kovrov inventors, who demanded payment of remuneration from the employer. The case ended in a settlement. The amount of compensation has been removed from the published decisions, but we dare to assume that the employees were definitely satisfied.

And here it is not only, and not so much that a conflict between the employer and the author can come out (although this case cannot be ruled out). Good products have such a property: as soon as they begin to make money, they immediately try to copy them. And in the event of a dispute with a competitor, the employer or customer will not be able to prove their rights.

There are plenty of such disputes in the courts! Here is the most striking example, which is interesting not only for the popularity of the product, but also for the dynamics of the legal grounds for refusing to protect rights. First, the allegedly right holder is denied due to the lack of documents , and then with their inadequate quality . Although, it would seem, these rightholders should have been overlaid with all the documents “in full”.

If the employer fulfilled the first paragraph (ensured the establishment of official duties and the work of the author within them), then with the second and third questions, as a rule, no questions arise. But there is an acute question of royalties, which is not included in the salary and must be paid in excess of it. Unfortunately, this issue is often carefully avoided by the employer.

Here we come close to the most important reason - the conflicting interests of the employee and the employer : the employer wants to receive rights and protect them from third parties, but does not want to pay remuneration for them, and the author wants additional remuneration, but prefers to reserve the rights.

2. Not enough time.

To resolve this contradiction, it is necessary to agree in principle. It’s hard and long to negotiate. But time does not wait. And the question is postponed until later. In our practice, we know the longer the pull, the more difficult it is to decide later. Especially if the money goes for the sale of the product.

3. Not enough knowledge and perseverance.

Even if everyone agreed in principle, the verbal agreements do not work. They must be recorded in writing. And here two questions arise:

1. Substantive - you need to correctly state and coordinate everything,
2. Formal - you need to approve and sign, exchange documents, organize storage, etc.

As soon as you think how long it will take, your hands will drop, and the easiest solution will come: "Maybe it will carry?". Do not carry it, believe me.

You can, of course, entrust a consultant with a solution to a question or ask your colleagues. But not the fact that the decision of colleagues is ideal for your situation, and the consultant is unlikely to cost reasonable money.

Thus, the problem is difficult to solve, long and expensive. As a result, everything starts to drift, even if the common interest is obvious and important for both sides. After all, the employer still wants to get the rights, and the author wants his reward.

In the meantime, summarize.

Due to unwillingness to solve the problem at the start, even with the difficulties outlined, the parties receive an order of magnitude more problems. But these problems are solved, firstly, according to the rules of the zero-sum game, and secondly, in the event of a loss, they entail much more significant costs than are required to solve them at the start.

There is an exit?

Ideally, the employer and the author should agree on the shore. Fundamentally, two important issues need to be resolved: transfer of rights and payment of royalties .

After reaching an agreement, write in writing:

• labor contract
• job description
• the local regulatory act of the employer, for example, the Rules of Intellectual Activity

Document templates are laid out on HERE

Further, in the process of work, to draw up all relations in accordance with the Rules: to sign tasks, reports on their implementation, acts of transferring results and payment of royalties.

This approach will not only avoid future disputes, but also guarantee further productive cooperation. A clear understanding of the situation and the consolidation of relations is a global good that avoids the zero-sum game and begins fruitful cooperative activities.

Therefore, even if there is no conflict in the future, the formation of relations is still profitable and clearly worth the effort. Indeed, the design itself minimizes the risk of conflict, and also makes it possible to protect rights from violations by unscrupulous competitors.

You say, it’s clear what to do is useful. But it is difficult, long and expensive. How can resources be optimized for work? We have an answer to this question, but we will postpone it for our next materials.
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(c) Kirill Mityagin