Am I crazy for not wanting to sign this contract?

[braden H]

I know we all love litigious stuff (particularly @davidhohn ) But I'm getting some pushback to sign a contract with this section:

"To the extent that, in the course of providing the Services,
Consultant jointly or solely conceives, develops, or reduces to practice any inventions, original
works of authorship, developments, concepts, know-how, improvements or trade secrets or
intellectual property rights related to the foregoing, whether or not patentable or registrable under
copyright or similar laws (collectively, “Company Inventions”), all right, title and interest in such
Company Inventions shall be solely owned by the Company, and Consultant hereby assigns all
right, title and interest to such Company Inventions to the Company"

and then further goes on to say:

"I hereby assign, and agree to assign automatically upon
creation, to the Company, without additional compensation, my entire right, title and
interest (including, without limitation, all Intellectual Property Rights) in and to (a) all
Inventions that are made, conceived, discovered or developed by me (either alone or jointly
with others), or result from or are suggested by any work performed by me (either alone or
jointly with others) for or on behalf of the Company or its affiliates, (i) during the period
of my employment with the Company, whether before or after the execution of this
Agreement and whether or not made, conceived, discovered or developed during regular
business hours, or (ii) during or after the period of my employment with the Company,
whether before or after the execution of this Agreement, if based on or using Proprietary
Information or otherwise based on my activities as an employee of the Company"

It also spends a half page defining an "invention" as pretty much everything.

And that section really really makes me raise my eyebrows. Everyone else reads this as "if you make it we own it" right? I'm not reading this wrong?

[Melissa_Bailey]

@braydin-hawlette not crazy ... cautious!

If this contract came across my inbox, I'd definitely be consulting an IP attorney. They are the expert and would be able to help negotiate fair terms, if this is a company you decide you would like to work for.

[Jeremy Ross]

Hi @braydin-hawlette, good question and potential red flag.

Perhaps the publisher is using the wrong legal proforma? This language looks like it was plucked out of a consultancy agreement, rather than a standard publishing contract, which offers author/illustrator copyright.

Are you being hired as a consultant?

What’s your agent say?

Good luck!

[jdubz]

@braydin-hawlette Yeahhhh I'd be nervous. I'm curious what an IP attorney says on this. The one thing that caught my attention the most was "solely conceives". The way it's written, it's saying while you are providing services, anything you come up with on your own in any way is now owned by the company. I get the collaborative part. To me that makes sense to cover your ass if you had someone work with you make something, that creator can't just take it from you.

So, if you end up coming up with something wildly successful on your own they can decide to take you to court for ownership of it? Seems like a crappy catch all to me.

[braden H]

@jeremy-ross It is indeed technically a consultancy contract (though the work is for illustrating a book). Are consultancy agreements usually this kind of thing?

[braden H]

@jdubz said in Am I crazy for not wanting to sign this contract?:

The way it's written, it's saying while you are providing services, anything you come up with on your own in any way is now owned by the company.

That's how I read it, too!

[carlianne]

So I've had this when getting signed as a full-time employee for companies (I think it is especially common in Silicon Valley of California where I live, but I'm sure it's elsewhere too). When I researched it, some states have an exception to this, such as in California there is an exception that any inventions created outside of work-hours without any of the companies equipment are not included.

@davidhohn Not sure if you remember, but this was the one I was talking about the other day! Where an employer can claim ownership over anything you create during or after work hours. I remember when I worked for Disney some of the artists were worried that if they created art in their personal time if that would be "owned" by Disney. Turns out California has an exception, not sure about how other states deal with it.

[Jeremy Ross]

Hi @braydin-hawlette, I don’t think so given consultant agreements typically are for providing technical advice as a subject matter expert, not a finished deliverable for sale (I.e., book)

[braden H]

@carlianne said in Am I crazy for not wanting to sign this contract?:

So I've had this when getting signed as a full-time employee for companies (I think it is especially common in Silicon Valley of California where I live, but I'm sure it's elsewhere too). When I researched it, some states have an exception to this, such as in California there is an exception that any inventions created outside of work-hours without any of the companies equipment are not included.

The hilarious thing is that this contract mentions the relevant california law. The contract actually states that it's not meant to contradict the specific bit of california law, provides the law in the contract, then goes on to contradict it!

[Larue]

@braydin-hawlette Sounds very controlling and like they get all rights for anything on the clock or off, show it to a lawyer for sure. These agreements are so sneaky, confusing and ambiguous. I wouldn't sign it with out fully understanding everything first.

[hakepe]

@braydin-hawlette said in Am I crazy for not wanting to sign this contract?:

Agreement and whether or not made, conceived, discovered or developed during regular
business hours, or (ii) during or after the period of my employment with the Company,
whether before or after the execution of this Agreement,

Sounds a bit worrying. I would definately consult a lawyer before signing and as a general rule I would never sign anything that I don't fully understand. The way I am reading this is that they own everything you make weather it is during or after business hours and also after your period of employmend has ended!!!?!!!

English is not my first language so I am not sure if I am reading this right, but I would definately not sign this befor consulting someone. Also it would be a good idea to contact a local illustration society to see if this is usual and get their advice. This does not read as a fair standard freelance illustration contract to me (if that is what it is).

[carlianne]

@braydin-hawlette oh interesting in my contract it has a section dedicated to the exception, I'll grab it for you when I get home, perhaps you can just ask them to add that specific clause more clearly. But if you're working in California I'm pretty sure they can't enforce that even if they wanted to because it's ... Illegal haha (I am not a lawyer, this is not legal advice)

I've never seen that in a contract for independent contractor work as in California they can't require contractors to work specific hours and I've always been required to have my own materials.

[carlianne]

@braydin-hawlette

Okay I found a contract and it specifically has an "exceptions" section that says aside from "exhibit B" and goes to explain when they are not allowed to enforce that rule specifically under California labor laws, I can email you if you like.

But also looking at your contract it does say that you are specifically giving up your rights for any inventions made "for or on behalf of the company of its affiliates" "or if based on or using Proprietary
Information or otherwise based on my activities as an employee of the Company". which is totally normal when doing work for hire for a corporation, for example if you worked at a game company, any character you make are owned by the company, not by you.

My understanding with publishers for children's books is that you get to retain your ownership and rights to what you create.

But if you wanted to be safe I think you could make sure that "exception" is spelled out more clearly.

(NOT LEGAL ADVICE, I'M NOT A LAWYERY PERSON)

[braden H]

@carlianne Interestingly enough, the contract goes out of its way to say that I am NOT an "employee". I am an independent contractor.

It's a weird contract that full of little contradictions that I find irritating at best and scary at worst. Blurgh.

[carlianne]

@braydin-hawlette I mean definitely worth having a lawyer look over it for you!

[braden H]

@carlianne yeah, cheap lawyers are real thick upon the ground

[carlianne]

@braydin-hawlette hahaha sorry! David did suggest to me before to look at "Volunteer Lawyers for the Arts" in my area, maybe they have something like that near you?

[braden H]

@carlianne they're a resource I'll try and tap in the future, for sure. But right now I think wasting much more time would be rude. After all, they're gonna need to find a new artist

[jdubz]

@braydin-hawlette I think it's worth investing enough time to fully understand what this means. Maybe some of the pros can lend an opinion on whether they've seen this, if it means what it sounds like it means, and if you should just run from these kinds of things or maybe have a boilerplate legal rebuttal that might ever work.

It probably won't be the last time you or others on this forum will see that kind of language on on a contract.

And kudos to you for reading it in detail. I think a younger me might have just scanned it and signed the damn thing

[Melissa_Bailey]

@braydin-hawlette there is a Volunteer Lawyers for the Arts organization in Canada. Here is the website link. Might be worth a try, as @jdubz suggests. You can always contact the client and explain that it might take a few days longer to respond because your lawyer is reviewing the contract.