Internship Working on Code You Developed at UW

 

Scenario:

  • You have a great opportunity for an internship at a company.
  • You and the company are interested in having you continue to work on code you have developed at UW.
  • You would like to continue to work on the code after you return to UW following the internship. (Here is where things start to get dicey.)

 

Things to consider in assessing the opportunity:

  • THE MOST IMPORTANT ISSUE: You need to retain your ability to publish and continue your education unimpeded.
  • Who else has contributed to the code? How will other UW students and faculty be affected by what happens to the code and what are their expectations?
  • Who owns the code?  If there is a patentable invention that covers the code, you should talk with your advisor and UW TechTransfer to discuss rights that sponsors or UW may have in the invention and how these fit with plans for distribution of the code.  Further information here.
  • Your advisors thoughts on using your code at the company.
  • What you want to do with the code in the long run (for instance, start a company and use this code in it).
  • The commercial value of the code (does it get affected by the company rights).

 

It may be difficult for you to continue development of the code back at UW without infringing on the company’s copyright for the new code you created during the internship This probably means that you will need legal rights to use the company code (that you created) in your continuing research at UW and to publish portions required for you to get your degree.

 

The following sample cross license between UW and a company is an example (based on a real interaction) of how intellectual property issues might be handled when your situation fits this scenario.  It is a cross license between UW and Gyronik Systems and only covers software that UW is managing. In order to use this cross license, you would assign the code to UW and UW would then negotiate a cross license (similar to this example) with the company hiring you.  Further information here.

 

This cross license allows the fictitious company, Gyronik Software Co, to use the UW code for internal noncommercial purposes forever and at no cost. If you believe the company should pay something for the code it doesn’t hurt to ask though!  The cross license also allows you to bring the Gyronik-modified code to UW and to use it at UW for internal noncommercial purposes at no cost and forever. It does NOT allow you to show the Gyronik code to anyone other than UW faculty, staff and students who agree not to distribute the code outside UW.  So for example, if you have a committee member from an outside entity (another university or company) then you would NOT have an automatic right to show them the Gyronik code. This example cross license does allow for publication of some of the Gyronik code and in some cases you may be able to publish more code than is allowed in this cross license, but in other cases, the company may allow less.  This is a key issue that you should discuss with your advisor and possibly your advising committee.

 

Advantage of this approach:

  • UW negotiates on the university’s behalf and your behalf to get rights to use the code developed at the company for further educational use at the university and to limit how the company can use the code under these terms.
  • UW TechTransfer probably has more experience than you do in working with the implications of these issues and really cares that your educational experience at UW goes smoothly. If something goes wrong, UW handles the risk.  Even if you decide to structure a contract on your own because the code is clearly not UW’s, CSE and UW TechTransfer are always available for advice to help you avoid having a bad experience.
  • A company employment agreement will in almost all cases take broader rights to your code [see Guidelines to Student Internship Agreements page].
  • It can be dicey business for the developer who wrote the company code (you as an intern) to continue developing the code at UW without risking infringing the company’s copyright. This type of license provides UW with legal rights to let you have internal research use of the company code you develop during an internship and also publication rights.

 

Disadvantages of this approach:

  • If you are the sole owner of the code (i.e. UW is not an owner) then you give up some control of how the code is managed commercially including sharing some of any revenue that may be generated.
  • If the major use of your code would be as an internal tool for the company (rather than something they would sell to others) this agreement lets the company get the code at no cost, other than the cost to hire you as an intern.
  • It does not cover unrelated code that you develop at the company – only derivatives of your UW code are covered.
  • Lets say you continue development of the code back at UW after working on it at the company.  You might want to recode some of the work you did at the company to improve the work and distribute the work outside UW or develop for another company for big consulting dollars (which is not allowed if company code is mixed in).   You can still get tagged with copyright infringement for distributing if you had access to the company code and your new code is substantially similar.  Since you also wrote the company code, you may end up borrowing or recreating some of the code unconsciously.  One solution is to have a colleague who has not seen the company code do the work for you.

 

 

SOFTWARE CO-LICENSE AGREEMENT

 

This Software Co-License Agreement (“Agreement”) is made and entered into effective as of the day of June, 2006, by and between Gyronik Software Company, a Delaware corporation having a place of business at 1234 Griffin Drive, Seattle WA 98105 (“Gyronik”), and the University of Washington, a public institution of higher education having administrative offices in Seattle, Washington  98195 (“UW”).

 

RECITALS

 

            WHEREAS, Gyronik is a company that develops software code and markets software products; and

 

            WHEREAS, UW is a university engaged in the development of software code for academic and research purposes; and

 

WHEREAS, Gyronik desires to retain students from UW as interns for the development and research of software code for Gyronik; and,

 

WHEREAS, such interns may provide and utilize software code that is proprietary to UW during the course of their internship with Gyronik; and,

 

WHEREAS, such interns may develop modifications to such software code during the course of their internship with Gyronik that would be proprietary to Gyronik; and,

 

WHEREAS, Gyronik desires a license to the UW proprietary code provided by the interns for internal non-commercial purposes only and UW will grant such license to Gyronik; and,

 

WHEREAS, UW desires a license to the Gyronik proprietary code developed by the interns from their modifications of the UW proprietary code for internal non-commercial purposes only and Gyronik will grant such license to UW;

 

            NOW, THEREFORE, the parties hereby agree as follows:

 

AGREEMENT

 

1.                  DEFINITIONS.

 

1.2       “Developed Code” means any modifications to the Outside Code, in source or object form, developed by a UW student during the course of their internship with Gyronik.

 

1.3       “Intellectual Property Rights” means any copyright, patent, registered design, design right, topography right, trade mark, service mark, logo, trade name, application to register any such rights, rights in the nature of any of the aforementioned rights, trade secrets, rights in unpatented know-how, moral rights, right to publicity and any other intellectual or industrial property rights of any kind in any part of the world.

 

1.4       “Outside Code” means any UW proprietary code registered with UW TechTransfer (which involves disclosure of the technology, identification of developers, identification of any funding obligations, and assignment of rights) in source or object form, utilized in connection with the UW students’ internships with Gyronik.

  

2.         LICENSE.

 

2.1       Subject to Gyronik’s compliance with the terms and conditions of this Agreement, UW grants to Gyronik an irrevocable, worldwide, paid-up, royalty free, non-exclusive, non-assignable, non-transferable and non-sublicenseable license to the Outside Code to use, reproduce, modify and adapt the Outside Code for any non-commercial internal purpose of Gyronik, including without limitation evaluation, research and development purposes.  Gyronik shall not distribute, sell, sublicense, rent, loan, lease or otherwise transfer the Outside Code, and/or any component thereof, to any third party, nor use such Outside Code for a commercial purpose of any kind.

 

2.2       Subject to UW’s compliance with the terms and conditions of this Agreement, Gyronik grants to UW an irrevocable worldwide, paid-up, royalty free, non-exclusive, non-assignable, non-transferable and non-sublicenseable license to the Developed Code to use, reproduce, modify and adapt the Developed Code for any non-commercial internal purpose of UW, including without limitation evaluation, research and development purposes.  UW shall not distribute, sell, sublicense, rent, loan, lease or otherwise transfer the Developed Code, and/or any component thereof, to any third party, nor use the Developed Code for a commercial purpose of any kind. UW may publish a portion of the Developed Code in a peer-reviewed journal or dissertation based on the UW graduate student committee’s opinion that said publication is important for the UW student’s academic success.

 

3.         DELIVERY

 

3.1       Outside Code, in source form, will be provided by UW to Gyronik immediately upon any intern’s proposed utilization of such Outside Code, and UW TechTransfer’s approval of such proposed utilization, at any time during the course of the internship with Gyronik.  By virtue of UW TechTransfer’s delivery of any code to Gyronik in connection with any intern’s performance of the internship, whether delivered directly or indirectly through the intern, UW represents to Gyronik that, to the best of UW TechTransfer’s knowledge, such code is Outside Code as defined in this Agreement.

 

3.2       Developed Code, in source form, will be provided by Gyronik to UW no later than seven days following the end of an intern’s internship with Gyronik.

 

4.         OWNERSHIP.

 

4.1       UW retains all right, title and ownership throughout the world in and to the Intellectual Property Rights embodied within the Outside Code.  Except as stated herein, this Agreement does not grant Gyronik any rights to patents, copyrights, trade secrets, trademarks or any other rights in respect to the items in the Outside Code, and all rights not expressly granted herein are reserved by UW and its suppliers.  The Outside Code is protected by law, including without limitation the copyright laws of the United States and other countries, and by international treaty provisions.  Gyronik shall protect UW’s copyright and other ownership interests in all items in the Outside Code.  Gyronik shall ensure that all copies of items in the Outside Code reproduced for any reason by Gyronik shall contain the same copyright, trademark and all other proprietary rights notices as appropriate and appear on or in the master items delivered by UW in the Outside Code.

 

4.2       Gyronik retains all right, title and ownership throughout the world in and to the Intellectual Property Rights embodied within the Developed Code.  Except as stated herein, this Agreement does not grant UW any rights to patents, copyrights, trade secrets, trademarks or any other rights in respect to the items in the Developed Code, and all rights not expressly granted herein are reserved by Gyronik and its suppliers.  The Developed Code is protected by law, including without limitation the copyright laws of the United States and other countries, and by international treaty provisions.  UW shall protect Gyronik’s copyright and other ownership interests in all items in the Developed Code.  UW shall ensure that all copies of items in the Developed Code reproduced for any reason by UW shall contain the same copyright, trademark and all other proprietary rights notices as appropriate and appear on or in the master items delivered by Gyronik in the Developed Code.

 

5                    NO WARRANTIES.

 

5.1              The Outside Code is licensed by UW to Gyronik “AS IS” and without representation or warranty of any kind.  UW AND ITS SUPPLIERS DO NOT AND CANNOT WARRANT THE PERFORMANCE OR RESULTS GYRONIK MAY OBTAIN BY USING THE OUTSIDE CODE.  EXCEPT FOR ANY WARRANTY, CONDITION, REPRESENTATION OR TERM TO THE EXTENT TO WHICH THE SAME CANNOT OR MAY NOT BE EXCLUDED OR LIMITED BY LAW APPLICABLE TO THE CONTROLLING  JURISDICTION, UW AND ITS SUPPLIERS MAKE NO WARRANTIES, CONDITIONS, REPRESENTATIONS OR TERMS, EXPRESS OR IMPLIED, WHETHER BY STATUTE, COMMON LAW, CUSTOM, USAGE OR OTHERWISE, AS TO THE OUTSIDE CODE OR ANY COMPONENT THEREOF, INCLUDING BUT NOT LIMITED TO NON-INFRINGEMENT OF THIRD PARTY RIGHTS, INTEGRATION, MERCHANTABILITY, SATISFACTORY QUALITY OR FITNESS FOR ANY PARTICULAR PURPOSE.

 

5.2              The Developed Code is licensed by Gyronik to UW “AS IS” and without representation or warranty of any kind.  GYRONIK AND ITS SUPPLIERS DO NOT AND CANNOT WARRANT THE PERFORMANCE OR RESULTS UW MAY OBTAIN BY USING THE DEVELOPED CODE.  EXCEPT FOR ANY WARRANTY, CONDITION, REPRESENTATION OR TERM TO THE EXTENT TO WHICH THE SAME CANNOT OR MAY NOT BE EXCLUDED OR LIMITED BY LAW APPLICABLE TO THE CONTROLLING  JURISDICTION, GYRONIK AND ITS SUPPLIERS MAKE NO WARRANTIES, CONDITIONS, REPRESENTATIONS OR TERMS, EXPRESS OR IMPLIED, WHETHER BY STATUTE, COMMON LAW, CUSTOM, USAGE OR OTHERWISE, AS TO THE DEVELOPED CODE OR ANY COMPONENT THEREOF, INCLUDING BUT NOT LIMITED TO NON-INFRINGEMENT OF THIRD PARTY RIGHTS, INTEGRATION, MERCHANTABILITY, SATISFACTORY QUALITY OR FITNESS FOR ANY PARTICULAR PURPOSE.

 

6                    TERM; TERMINATION.

 

6.1              This Agreement shall continue to remain in effect as of the Effective Date until such time as the Agreement is terminated under the provisions of this Section 6. 

 

6.2              Either party may terminate this Agreement at any time upon thirty (30) days written notice to the other party provided that at the time such notice of termination is sent there are no UW students currently retained as interns by Gyronik and there continues to be no interns retained by Gyronik up until the date of termination.  However, the provisions of this Agreement shall continue to remain in full force and effect with respect to all Outside Code and Developed Code licensed under this Agreement prior to its date of termination.

 

7                    MISCELLANEOUS TERMS.

 

7.1              Governing Law and Jurisdiction. This Agreement shall not be governed by the United Nations Convention on Contracts for the International Sale of Goods, the application of which is expressly excluded.

 

7.2              Assignment.  Neither party may assign its rights or obligations granted under this Agreement without the prior written consent of the other party, such consent not to be unreasonably withheld.  Any purported assignment made without the requisite consent shall be void and of no effect.

 

7.3              Waiver.  None of the provisions of this Agreement shall be deemed to have been waived by any act or acquiescence on the part of a party, its agents, or employees, but only by an instrument in writing signed by any authorized signatory of such party.

 

7.4              Equitable Relief.  Each party acknowledges that its breach of Section 2 or Section 3 of this Agreement shall cause irreparable harm to the other party and that remedy at law would be inadequate.  Therefore, in addition to any and all remedies available at law, each party shall be entitled to seek an injunction or other equitable remedies, without having to post bond, in all legal proceedings in the event of any threatened or actual violation thereof.

 

7.5              Entire Agreement.  This Agreement constitutes the entire understanding between the parties and supersedes all prior or contemporaneous oral or written agreements regarding the subject matter hereof.

 

7.6              Modification.  This Agreement may not be modified except by a writing signed by an authorized representative of each party.

 

7.7              Severability.  If any part of this Agreement is found void and unenforceable, it shall not affect the validity of the balance of this Agreement, which shall remain valid and enforceable according to its terms.

 

7.8              Notice.  All notices, including notices of address change, required to be sent hereunder shall be in writing and shall be deemed to have been given when faxed, sent by overnight courier or mailed by express or first-class mail to the signatory of recipient at the party’s designated address.

 

7.9       Independent Contractors.  The parties are independent contractors under this Agreement.  Nothing in this Agreement creates a partnership, joint venture or agency relationship between the parties. 

 

IN WITNESS WHEREOF, the undersigned have caused this Agreement to be executed by their respective authorized representatives.  This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same original.

 

GYRONIK Software Company           UNIVERSITY OF WASHINGTON

 

Signature:                                                         Signature:                                                           

                                                                        

Name:                                                               Name:

                                                                                   

Title:                                                                  Title: UW TechTransfer, Digital Ventures

                                                                                   

Date:                                                                Date:                                                                  

 

                                                                        Concurrence, University of Washington

 

                                                                        Signature:                                                           

                                                                        Name: 

Title: Chair, Computer Science & Engineering

                                                                                   

Date: