Intellectual Property Law

Intellectual property law questions? Ask a lawyer

Ask a Lawyer,
Get an Answer ASAP!

How do I assign ownership (licence) of a piece of software…

Customer Question
How do I assign ownership...
How do I assign ownership (licence) of a piece of software I've written to a (single owner) LLC that I am about to form?
Submitted: 6 years ago.Category: Intellectual Property Law
Show More
Show Less
Ask Your Own Intellectual Property Law Question
Answered in 16 minutes by:
1/7/2012
IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
Law Educator, Esq.
Category: Intellectual Property Law
Satisfied Customers: 126,939
Experience: Attorney practicing all aspects of copyright/trademark law
Verified
This is done by written contract between you and the LLC with you signing in capacity as member of the LLC. There is no need for any major contract. It also depends on if you are licensing the software or you want to transfer ownership as to whether or not you need to submit a change of ownership to the US Copyright Office. If you are merely licensing to the LLC, then no notice of change of ownership is submitted to the copyright office, if you want to transfer complete ownership to the LLC, then you need to file a change of ownership of copyright form with the copyright office which you can do online at http://www.copyright.gov.

I hope you found my answer helpful, please click on the GREEN ACCEPT button above for my answer. This is necessary for me to be paid for my work and so that I can get credit for assisting you. Your question will not close, and you will still have the opportunity to follow-up if needed. Leaving a bonus and positive feedback is not required, but doing so is certainly appreciated!

If you have additional questions, please keep in mind that I do not know what you already know or don't know, or with what you need help, unless you tell me. Please consider that I am answering the question or question that is posed in your posting based upon my reading of your post and sometimes misunderstandings can occur. If I did not answer the question you thought you were asking, please respond with the specific question you wanted answered.

Also remember, sometimes the law does not support what we want it to support, but that is not the fault of the person answering the question, so please be courteous.

PLEASE NOTE WELL, LEGAL ANSWERS TAKE MORE THAN “MINUTES” TO PUT TOGETHER AS WE ARE DEALING WITH LAWS OF 50 STATES PLUS FEDERAL LAWS, AS WELL AS DEALING WITH OTHER CUSTOMERS, SO PLEASE BE PATIENT IT WILL BE MORE THAN “MINUTES” IN SOME CASES BEFORE YOU GET A RESPONSE, BUT BE ASSURED YOU ARE NOT BEING IGNORED.

There can also be a delay of an hour or more in between my answers because I may be helping other customers or taking a break.

You can always request me through my profile at http://www.justanswer.com/law/expert-paulmjd/ or beginning your question with “For PaulMJD…”

Ask Your Own Intellectual Property Law Question
Customer reply replied 6 years ago
What if I wrote the software AFTER forming the LLC? Basically, is there a scenario by which my LLC would automatically own the software without me having to transfer ownership to it? Also, would the software (or any piece of IP for that matter) have to be copyright-ed in order to be owned by someone (myself or my LLC)? Thanks.

IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
It does not matter whether you write it before or after since it is your own LLC and you are not working for another party. If you write it after you can choose to license it to the LLC or you can register the copyright in the name of the LLC that is your choice, unlike if you are working for someone else and it would be a work for hire and belong to the employer.
Law Educator, Esq.
Category: Intellectual Property Law
Satisfied Customers: 126,939
Experience: Attorney practicing all aspects of copyright/trademark law
Verified
Law Educator, Esq. and 87 other Intellectual Property Law Specialists are ready to help you
Ask your own question now
Customer reply replied 6 years ago
Paul, thanks. I'll accept this answer but, just a heads up, would like to ask you further questions later on (I subscribed to the unlimited plan. Lucky you ;^))

I'm about to sign an employment contract with a firm (hedge fund) for which I will be trading my own strategies. I plan to set up an LLC that owns my strategies (software) which would then licence them to said firm. Also, there is a 2yr non-compete clause in the contract which prohibits me to "enter into any partnership, limited liability company, corporation, new or joint venture or similar arrangement" for two years after I terminate employment with them. However, the contract says nothing about entities (LLC's) which I have formed (joined) BEFORE I've signed the contract -- hence, the idea to form the LLC now, before I sign. Let me know if you see any glitches in my plan. Thanks again!
IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago

I am here pretty much every day all day and night, so just ask for me and I will get to you as soon as I am available.

You need to form the LLC and you need to inform them on hire of the LLC and you need to get this non compete modified to exclude any work you do with your LLC from the non-compete. You need to make it known and you need to have the agreement modified because if not and you do the same type of work as the hedge fund they can sue you to prevent it.

Ask Your Own Intellectual Property Law Question
Customer reply replied 6 years ago
Thanks Paul. On what basis could they sue me, though? My obligations to them are stated in our contract and the contract explicitly prohibits me from ENTERING (or forming) any LLCs for two years after I terminate with them. The contract also says nothing about LLCs I own (I've formed/joined) NOW.

My fear is that if I ask them to amend the contract -- as you propose -- they would just amend it to force me to close/terminate my LLC as a precondition of employment. Why would I be doing their (lawyer's) job for them?

In general, what court would prohibit me from practicing my profession (trading my own strategies) for two years? Am I supposed to be begging on the street during that time and not earn a living?

Thanks for your advice!


IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
You need to just make sure they know the LLC exists and get it excluded in the agreement, since it could lead to litigation later on down the line. Employment agreements are about full disclosure, if you fail to disclose, they have grounds to argue the case. If you disclose it and get everything set in the beginning, it can save a lot of aggravation and litigation.

All courts will prohibit you from competing as non-compete agreements are fully legally enforceable and yes, the courts do not care if you have to beg on the streets (as harsh as that sounds) if you enter into a non-compete agreement then you are held to it and they will prohibit you from engaging in any business that competes with your employer.
Ask Your Own Intellectual Property Law Question
Customer reply replied 6 years ago
Thanks for that, and sorry if I am a pain...
I guess, the LLC would be automatically disclosed by the very fact that it would be the entity which licences my software (strategies, IP) to them while I trade/work for them, no? And what does it actually mean to "exclude" the LLC from the non-compete? They would definitely know I own the LLC NOW, they know that the LLC owns my IP, and if they explicitly don't ask me to close/dissolve it now, I will own the LLC AFTER my termination with them, as well. How exactly am I breaching the contract?

I really appreciate your advice!
IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
You are not a pain, believe me.

It may or may not be automatically disclosed to them unless they contract with your LLC and not you to work for them. I mean that the non-compete needs to be modified to state that you cannot work for or form any company other than the company you already have formed and state in there that the current LLC is excluded from the non-compete.

If your LLC competes with this employer that would be how you are breaching the agreement
Ask Your Own Intellectual Property Law Question
Customer reply replied 6 years ago
Paul, there is a separate section in the contract where they are asking me to list "Pre-existing Materials and Licensed Products" with their corresponding owner (which would be my LLC). The contract states that they (the employer -- let's call them XYZ) would be granted a licence to use such Licensed Products. The contract also explicitly states that:

"For the avoidance of doubt, nothing herein shall be interpreted to restrict your use, or affect your ownership, of the Licensed Product following the termination (for any reason) of your employment with XYZ."

So they are explicitly saying that, after termination, I CAN use what I (or my LLC) currently own.

Btw, there is no "Non-compete" clause called (verbatim) as such in the contract. Here's the relevant part exactly:

"During your employment with any XYZ Company and for a period of two (2) years after the date of termination thereof, you shall not, without the written consent of XYZ, directly or on behalf of any third party:
i. enter into any partnership, limited liability company, corporation, new or joint venture or similar arrangement with, or hire, retain or engage or attempt to hire, retain or engage (whether directly or through any third party), any person as an employee, consultant or contractor, who is, or was at any time during the 12-month period immediately preceding the termination of your employment with any XYZ Company, an employee of any XYZ Company (a “Covered Person”)"

Wow! I just realized that the above is not a "non-compete" at all. It only prohibits me from entering anything WITH ANYONE associated with XYZ. I am actually free to do whatever I want! Right?

Again, many thanks for your help and patience. Is there a way I could send you an extra bonus?

IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
These are two different types of clauses and the clause you are describing is a "non--solicitation clause" saying you cannot take on or contract with any employees.

The part about pre-existing intellectual property is standard and you need to list your pre-existing IP and all of it so you can protect it from them to claim that it was developed while working for them and thus belongs to them as a work for hire.
Ask Your Own Intellectual Property Law Question
Customer reply replied 6 years ago
Understood. Thanks.

This one remains unclear (asked before):

Would the software (or any piece of IP for that matter) have to be copyright-ed in order to be owned by someone (myself or my LLC)? And if so, does that mean that it would have to be DISCLOSED (in detail; source code?) to whatever government agency would be issuing the copyright? I'd prefer not having to make my strategies/software known to the public.


IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
No, it has a common law copyright from when it is created, but that gives limited recovery in case of an infringement, but for the $35 charge, why not register it. You can register it at http:///www.copyright.gov and you have to disclose the entire software code if you want it protected. Once you do however, nobody else can use it or copy it.
Ask Your Own Intellectual Property Law Question
Customer reply replied 6 years ago
Hmm... I'd have to think carefully about this. The problem with trading strategies, systems, software is that once they're disclosed anyone could use them (trade them for profit) without anyone else knowing. (How would I find out?) Also, once someone gets the basic idea (from the disclosed code) they could easily change the code or write their own to do basically the same thing while making it hard to prove that it was "stolen" from the original. That's why you don't see trading software/systems being patented or "protected" by copyright. In these cases, secrecy (limiting access, distribution) is much more important than legal "protection" from infringement. I don't think I should go the copyright route if common law already says that I own what I (or my LLC) allow XYZ to use via a license. Let me know if my thinking is wrong.
IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
You can do it that way as well and as long as you release the software to nobody, it is only in your possession then it would be protected. However, the copyright office protects trade secrets as well and the Copyright Office has issued regulations that permit the deposit of less than all of the work or a "redacted filing" whereby you can keep out proprietary trade secrets to protect your filing and still get registration protection.
Law Educator, Esq.
Category: Intellectual Property Law
Satisfied Customers: 126,939
Experience: Attorney practicing all aspects of copyright/trademark law
Verified
Law Educator, Esq. and 87 other Intellectual Property Law Specialists are ready to help you
Ask your own question now
Customer reply replied 6 years ago
That's interesting. Looks like a Catch 22. In order to better protect something legally via copyright, one must disclose enough of it so it's defined as something unique. If one discloses too little (keep the valuable parts secret), then the "protection" of the copyright is weakened to the point of it becoming obsolete.

Also, from the copyright.gov FAQ:
"How do I protect my idea?
Copyright does not protect ideas, concepts, systems, or methods of doing something. You may express your ideas in writing or drawings and claim copyright in your description, but be aware that copyright will not protect the idea itself as revealed in your written or artistic work."

I think I'll skip the copyright part.
Thanks!

IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
You can redact your copyright application, that is how Coke has their secret recipe copyrighted, the key ingredients or portions are redacted. Nobody was talking here about protecting an idea, so that is irrelevant, you were talking about protecting actual software.
Ask Your Own Intellectual Property Law Question
Customer reply replied 6 years ago
Hmm... So what has Coke actually copyrighted? A few redacted, blacked-out lines on a piece of paper? Who has access to the redacted (secret) pieces of their copyrighted recipe? (Anyone at the copyright office?) If no one (but Coke) has access to them, how can Coke prove (in court) that they have actually copyrighted what they claim they have copyrighted and that the secret recipe is actually theirs?

As for whether I'm protecting an idea or software, I already explained the problem. The value of the software is not the software but the idea implemented by it. This makes me think that all this legal talk about licencing and ownership in the contract is mostly meaningless. After the firm gets my software (after my LLC licences it to them) the toothpaste would have left the container and there'd be no putting it back. That's the price I'm paying for the privilege of entering this contract with them, I guess.


IP Lawyer: Law Educator, Esq., Lawyer replied 6 years ago
Yes, they redact the trade secrets, nobody has access it is filed in a protected filing and only the redacted copyright goes on the Library of Congress records. The copyright office keeps the regular filing in a trade secret file. When you call the copyright office they will explain that you file the copyright and then file the redacted document with the Library of Congress indicating it is redacted. They cannot release anything by the redacted filing.
Ask Your Own Intellectual Property Law Question
Was this answer helpful?

How JustAnswer works

step-image
Describe your issueThe assistant will guide you
step-image
Chat 1:1 with an ip lawyerLicensed Experts are available 24/7
step-image
100% satisfaction guaranteeGet all the answers you need
Ask Law Educator, Esq. Your Own Question
Law Educator, Esq.
Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 126,939
126,939 Satisfied Customers
Experience: Attorney practicing all aspects of copyright/trademark law

Law Educator, Esq. is online now

A new question is answered every 9 seconds

How JustAnswer works:

  • Ask an ExpertExperts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional AnswerVia email, text message, or notification as you wait on our site. Ask follow up questions if you need to.
  • 100% Satisfaction GuaranteeRate the answer you receive.

JustAnswer in the News:

Ask-a-doc Web sites: If you've got a quick question, you can try to get an answer from sites that say they have various specialists on hand to give quick answers... Justanswer.com.
JustAnswer.com...has seen a spike since October in legal questions from readers about layoffs, unemployment and severance.
Web sites like justanswer.com/legal
...leave nothing to chance.
Traffic on JustAnswer rose 14 percent...and had nearly 400,000 page views in 30 days...inquiries related to stress, high blood pressure, drinking and heart pain jumped 33 percent.
Tory Johnson, GMA Workplace Contributor, discusses work-from-home jobs, such as JustAnswer in which verified Experts answer people’s questions.
I will tell you that...the things you have to go through to be an Expert are quite rigorous.

What Customers are Saying:

Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises!

Gary B.Edmond, OK

My Expert was fast and seemed to have the answer to my taser question at the tips of her fingers. Communication was excellent. I left feeling confident in her answer.

EricRedwood City, CA

I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight.

MichaelWichita, KS

PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent.

Three H.Houston, TX

Anne was extremely helpful. Her information put me in the right direction for action that kept me legal, possible saving me a ton of money in the future. Thank you again, Anne!!

ElaineAtlanta, GA

It worked great. I had the facts and I presented them to my ex-landlord and she folded and returned my deposit. The 50 bucks I spent with you solved my problem.

TonyApopka, FL

Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help.

Mary C.Freshfield, Liverpool, UK

< Previous | Next >

Meet the Experts:

Robert McEwen, Esq.

Robert McEwen, Esq.

Lawyer

883 satisfied customers

Licensed Texas General Practice Attorney

Dimitry K., Esq.

Dimitry K., Esq.

Attorney

561 satisfied customers

I assist my clients with IP questions that arise in their daily course of doing business.

Thomas Swartz

Thomas Swartz

Lawyer

466 satisfied customers

Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.

Ely

Ely

Counselor at Law

461 satisfied customers

Licensed attorney in private practice.

Wilton A. Person

Wilton A. Person

Lawyer

352 satisfied customers

MBA, Experienced and Knowledgeable in Intellectual Property Law

BartEsq

BartEsq

Researcher

192 satisfied customers

Juris Doctor

P. Simmons

P. Simmons

Lawyer

178 satisfied customers

12+ yrs. of legal experience.

< Previous | Next >

Related Intellectual Property Law Questions
I have developed with a colleague a software that we are
Hello,I have developed with a colleague a software that we are considering to offer commercially. Could you please advise of ways to reserve the intellectual property rights? Is it possible/required t… read more
Maverick
Maverick
Doctoral Degree
6,342 satisfied customers
I wrote software for a company and I have left the company.
I wrote software for a company and I have left the company. The process to compile and administer the software was never documented. They are insisting I return and create this documentation (for no c… read more
Maverick
Maverick
Doctoral Degree
6,342 satisfied customers
I am doing a research about the use of IPRs licenses in
I am doing a research about the use of IPRs licenses in software industry. My question is about the grant-back clause license when the licensee commits to license back any development and modification… read more
Law Educator, Esq.
Law Educator, Esq.
Lawyer
Doctoral Degree
126,939 satisfied customers
As a contractor to the military, I wrote a piece of software
As a contractor to the military, I wrote a piece of software now used to support space missions. My company, after some discussions with both their and the government's lawyers, came to the conclusion… read more
Dimitry K., Esq.
Dimitry K., Esq.
Attorney
Doctoral Degree
561 satisfied customers
! I am in the process of filing Copyright new self-help
Hello! I am in the process of filing Copyright for my new self-help program named ‘The Worry 180 Program.' This program consists of 4 eBooks (i.e. no hard cover books) and is designed to help people d… read more
Law Educator, Esq.
Law Educator, Esq.
Lawyer
Doctoral Degree
126,939 satisfied customers
Can I copyright a logo I designed years ago, although it is
Can I copyright a logo I designed years ago, although it is currently being used in my company's branding if I am co-owner and original designer of said logo?… read more
Dimitry K., Esq.
Dimitry K., Esq.
Attorney
Doctoral Degree
561 satisfied customers
I have provided screen writing, directing, hosting, voiceover, location scouting, shooting
I have provided screen writing, directing, hosting, voiceover, location scouting, shooting location, wardrobe, food and transportation for all of the production except for the computer, editing softwa… read more
BH
BH
Attorney
Post-Doctoral Degree
309 satisfied customers
If two men form an LLC and work under this LLC (entertainment
If two men form an LLC and work under this LLC (entertainment company that produces three shows a year) for several years, is it legal for one of the partners to trademark the name and logo of the LLC… read more
Attorney Wayne
Attorney Wayne
Attorney-at-Law
JD
1,492 satisfied customers
What are the standards for a contract to sign over all rights
What are the standards for a contract to sign over all rights of an Intellectual Property? non-compete clause (length of time?) non-disclosure of settlement terms (what to be aware of?) mutual non-dis… read more
Attorney Wayne
Attorney Wayne
Attorney-at-Law
JD
1,492 satisfied customers
2 questions for the same objective. My mother started and organization
2 questions for the same objective. My mother started and organization and the family would like to trademark her works in video and audio form and protect her name(image) which seems to possible but … read more
socrateaser
socrateaser
1,031 satisfied customers
I have been working with a company as an independent contractor
I have been working with a company as an independent contractor (1099) for the past couple of years writing software. I NEVER signed a contract. They want me to now sign a contract to give them full o… read more
Roger
Roger
Litigation Attorney
Doctoral Degree
26,939 satisfied customers
Im an artist, and I just formed a LLC with my wife. My wife
I'm an artist, and I just formed a LLC with my wife. My wife and I work on the same drawings. What's the best way for registering our artwork (drawings) with the copyright office? (so that we're prote… read more
Dimitry K., Esq.
Dimitry K., Esq.
Attorney
Doctoral Degree
561 satisfied customers
A sales company is pressuring my 2 partners and I to join their
A sales company is pressuring my 2 partners and I to join their company and turn over the software. Our share would only be 8% each. I believe my 2 partners have decided to move forward, but I'm not s… read more
Dimitry K., Esq.
Dimitry K., Esq.
Attorney
Doctoral Degree
561 satisfied customers
hi, 1. ive completed two books and want to submit them
hi, 1. i've completed two books and want to submit them for copyright protection. i am not sure exactly how to hold the title - my personal name or my business name. it's a single member llc. i've bee… read more
Robert McEwen, Esq.
Robert McEwen, Esq.
Lawyer
Doctoral Degree
883 satisfied customers
I need an NDA and Ownership Assignment agreement with a software
I need an NDA and Ownership Assignment agreement with a software development company. Are these two separate forms or there is one that contains both? Also, if I work with a development company outsid… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
If I hire a programmer to code a piece of software, does he
If I hire a programmer to code a piece of software, does he have the right to leave and distribute the product without written consent of the person he coded it for… read more
Win
Win
J.D.
265 satisfied customers
I write software for a company called HB. They want me to
I write software for a company called HB. They want me to sign a non-compete clause. I also have my own LLC which I develop web sites and make money from advertising on those web sites. I am in partne… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
I have developed a software framework (background technology)
I have developed a software framework (background technology) in Microsoft .Net. I am trying to work out a deal of "shared copyrights" with my former employer (a software vendor) to develop a System f… read more
KUMI95
KUMI95
Attorney
Doctoral Degree
17 satisfied customers

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

Show MoreShow Less

Ask Your Question

x