Ask HN: My company wants my side project. What can I do?

Your legal options are really based on what your employment contract says and (to a lesser extent) what state you live in. If you signed an IP agreement, then they almost certainly have ownership. If you didn't, then they are in a weak position but they probably have more money than you and they pay your bills so they have leverage if you got into a fight.

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But I don't feel like this is primarily a legal issue. It is a negotiation about property. The contracts come into play but the company and you both benefit more from a negotiated agreement than from a fight. It hurts them if you get mad and just quit, fork, give them a PR black-eye, and take the community with you.

So you should: 1. Take your employment contract and ask an attorney to look at it. 2. Ask if this document gives them the right to transfer control of an open-source project to them. 3. Decide if you are willing to quit over this or not.

Once your head is clear on what you are willing to do, it is time to start negotiating...

Hire the attorney to negotiate for you. Don't do it yourself -- you need a 3rd party and lawyers are professional negotiators. Expect to spend some money -- feels roughly like 5-10 hours if it goes quickly. You should be very clear to your company that you are asking a lawyer to negotiate for you because you want to work something out and you feel like it will destroy your relationship with them if you try to do it yourself.

Then get the attorney to discover why they want legal control of a project that is open-source when they already have you as an employee. If they care about the project and just want to influence the roadmap, they could just pay you to work on it full-time and get most of the benefit. If they feel like they need it for other reasons, see if there is an overlap between what you want and what they want. If they just feel like they own everything you do, you need to decide if that's what you signed up for.

Overall, I find it hard to give any better advice because you only presented what you want and not what the company wants. It could be anything from appearances (their investors want them have control) to money (they see a way to make a lot of money from your work). Until you know what the other party wants, you can't really come up with an agreement.

As many have said, IANAL but I’ll give my 2¢ as well. Your options are probably going to come down to your employment contract and where the company is based out of. Possibly even where you live.

My non-lawyer understanding is that if you live in California and your company is based or the contract states that it is intended to be interpreted by California law then I’ve always operated under the following understanding:

(Not a lawyer but...) I’ve been led to believe you are safe if you work on your own time, with your own resources and it does not directly relate to the employer.

I think someone referred to this once as The California Clause. If that is the right name then I’d say the California clause is not going to protect your ownership on this case. However, maybe you aren’t in California? It is hard to imagine a state in the US that is more employee friendly so I would be surprised if you found your situation better elsewhere. Besides possibly another country? Even then I’d be surprised. Things tend to trend the other direction outside of California.

That being said, many have told you to discuss with a lawyer. And some have even warned that it can cause unnecessary conflict if you do. They aren’t wrong but you can always talk to a lawyer just to see what they think your options are. If this is as much of a slam dunk case in favor of your employer as I assume it is, I like to think a good lawyer would be able to let you know.

On the bright side, if your employer does take it over and they still allow it to be open source, that’s super great! Getting paid to do open source is a blessing. There are also so many benefits to being the creator of a valuable tool in your company. These things can often lead to promotions, bonuses and all kinds of personal fulfillment at work.

If you do learn that you’re going to have to hand it over, find a way to spin it into a good thing. Don’t let it make you bitter. And next time you build something on the side, consider your employment contract and decide if you want to build something that doesn’t relate with your employer so you might have a better shot to align your desire to keep it.

Try not to let this make you bitter. This could be a great thing whichever way it turns out.

Just my personal uneducated opinions below:

Only a proper lawyer can help you, though you should do initial searches online to see wether you get an inkling of where you stand, and possibly reduce amount of time needed to spend on expensive lawyer. See if there are free legal councel near where you live, online or if anything can be covered by insurance.

"I've developed it on my own time but the product directly relates to what my employer does"

This is a bright huge red flag. Depending on the contract you signed, creating something in direct competition while employed can be grounds for assuming ownership. Using company resources, time, knowledge, clout, internal discussions and/or reputation, can be strong case for this company, against your position. Evidence and witnesses as well as your own words can be used against your position. If this IP was unrelated to company offerings, they would be less interested, and probably objectively strengthen your own case somewhat, depending on what they can prove and not.

If you want to go very cheap, or avoid possible bill-hungry lawyers: Ask your boss wether they've cleared this with their internal lawyers and if you can get this confimed via a signed statement of company claims of ownership and exactly about what they claim ownership of and not. Always go internally through nearest boss or neutral intermediate in writing: Export the communications as well. Avoid contradicting your own claims unwittingly.

If you get this letter and don't want to lawyer-up, I'm afraid your options are limited and you should do whatever necessary to avoid getting fired or sued. If they bluffed, you just called them on it, and can negotiate from there.

Unfortunately, depending on the legal councel at this company and possible value of your work, your standing looks very weak, possibly damaging against you. This is why it's so vital to keep work and personal life divided. What may help in such situations is to do book-keeping of resources and hours spent separately for such side-project and document the process, while making sure Nothing from work is used.

IANAL and I'm sure this will get downvoted since people won't like what I have to say.

I'd concentrate on the positive rather than the negative, that if you get to work on this project via your employer from this point on you'll be getting paid to do the thing you were doing for free.

Getting paid for past work seems unlikely. You already admitted you didn't care about compensation by open sourcing the project. You were willing to give it to anyone, including your own company as open source. Not that you can't ask, maybe they'll be nice about it, but just saying it's strange that before they asked you were giving it away for free to any company and now that they asked you want compensation.

To be harsh you arguably did something wrong by making something that directly competes with your employer. It doesn't matter that it was on your own time. It's called a "Duty of Loyalty" and basically means you can't get paid as an employee and at the same time stab them in the back by competing with them.

https://www.google.com/search?q=duty%20of%20loyalty%20employee

Maybe you don't think it competes but you said yourself it directly relates to what they do so yes, as you admitted, you've cornered yourself in a bad place.

Some companies, like Google, have an easy way to get a signed contract saying they will not claim interest in your project before you start (or they'll point out it's a conflict of interest like if you said you wanted to make a cloud based mail service ... in which case my guess is they would try to get you to join the gmail team, contribute to it, or you could quit and start your cloud based emails start up). The point is they are upfront about the legal issues and provide a way to work out a solution. Most companies don't have a procedure for this until it's too late.

I created product on the side as a side project in my own time and it has become a huge hit in the community to a point where my employers wants me to transfer the code-base over. The company does OSS and my side-project is also Open-Source.

Let me restate this: You had an idea you were so interested in you created it in your off time. You made it open source. Your company likes it so much they want to contribute to the codebase. You, being the leading expert in this software, are the one most likely to be tasked with working on this codebase.

Beyond the obvious "OMG You're going to get paid to work on your pet project!"

the concern being that they seem to want to control it.

Compensation is probably not going to happen. IF it does then you are pretty much guaranteed they will own and control it.

I would advise NOT seeking compensation, and instead saying "omg! I'm so glad you appreciate the work I've put into this open source project. When can I speak to folks about how the current development process of this project and how to submit pull requests?"

Keep redirecting the conversation towards them contributing. If they ultimately say they need to control the codebase just tell them that if they're not ok with contributing to the project they can always fork it. They get the control they want and it's probably not worth suing you and against their best interest to fire you, because you're the leading expert in how it works.

Side note: I'd switch the license to GPL ASAP. Not because I'm a huge GPL fan but because the GPL can be used as a weapon to prevent them from using it without contributing. Or, it is better at that than any other license. It sounds like you're the sole contributor, so that's probably legally sound. I'd also make some quick improvements that they would not want to forgo since it sounds like they already have the current version under the Apache license.