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Contractors, beware the fine print: lawyer

Contractors need to read their contracts carefully or risk having intellectual property from personal projects signed over to their employers.
Written by Luke Hopewell, Contributor

Contractors need to read their contracts carefully or risk having intellectual property from personal projects signed over to their employers.

Gavel

(My trusty gavel image by Brian Turner, CC2.0)

"We did a case a few years ago when a computer programmer left one company and joined another, and he took some standard tools and modules with him, and the first company sued him for that," Queensland intellectual property lawyer John Swinson said.

Swinson, a partner at firm Mallesons Stephan Jaques, said that contractors in any field, including government IT work, should clarify what they are bringing to the employment relationship from the outset.

"If you bring [your] chair to work with and take the chair with you, you can't be accused of theft on the way out ... you need to identify what it is you're bringing with you," he added.

Swinson contributes to Mallesons Stephan Jaques' "IP Whiteboard" blog, where he described a case in a recent post where an ex-contractor was taken to court by a previous employer over material she may or may not have created before she came to work for the organisation.

In the case, the judge found that the defendant, Ms Cassidy, had in fact been working for the company outside of her contracted field on other projects, and had not specified pre-owned intellectual property in her initial contract negotiations.

"This case looked at a relationship where Ms Cassidy turned up and did piecemeal kind of work and she had been working on stuff previously herself, and used stuff from her existing work. From that sense, she wasn't doing that as an employee, but while contracted to do x, she was doing y."

Swinson said that if a contractor doesn't set out their particular fields of work and the pre-existing intellectual property brought to the table in the initial negotiation period, both parties are headed for trouble.

"Make sure the contract specifies what's being done. At the end of the day, you don't want a dispute over ownership. The moral is to be clear from the outset. Focus on what it is you're doing and who owns the intellectual property," Swinson said.

"From a legal point of view ... it's a good example to highlight [intellectual property] issues. It's a good facts scenario. It's a timely reminder of the rules that apply to intellectual property creations by contractors."

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