Licensing self-written software and trademark to the company which I own I wrote software (as a hobby) a while ago and also registered a trademark for it. I thought about trying to commercialize the software, and realized that in order to limit my risks it makes sense to found a Ltd (actually the Swiss version which is a GmbH). There are no other people involved in my GmbH (no co-owners, no-co-founders, no employees, no investors). Can I own the software and trademark privately, and license both to my GmbH? I would do this exclusively and for a symbolic amount of money. The GmbH would sell the software under the trademark, and I would get the money as dividends. The point is to keep the GmbH just as lean and simple as possible, not e.g. about any tax reduction schemes. I am considering an exclusive free license agreement based on some standard template. I would sign as Licensor (me as private person) and also as Licensee (me as representative/CEO of my GmbH). What does the law say about such a setup? Can the same person sign both sides of a contract?
I did some research and found the information below. It took me a while to figure out that the issue is known in German as &quot;Insichgeschäft&quot;. The quotes below are translations from Wikipedia. The term self-dealing is also used in Switzerland. It is regulated in Art. 32 ff. OR. The Federal Supreme Court has consistently ruled that self-contracting is fundamentally inadmissible because it “regularly leads to conflicts of interest and is therefore not covered by the company's purpose”. The contracting of the agent with himself should only be able to develop legal effects in exceptional cases, in particular if either the risk of the person represented being disadvantaged due to the nature of the legal transaction is excluded (e.g. &quot;purchase of goods with clearly defined market or stock exchange prices&quot;), or if the representative &quot;specifically authorizes the representative to conclude a contract with himself, which in certain circumstances can also be tacit or approve the transaction retrospectively&quot;. Now since I am the owner of the business and my company would get a free exclusive license, I assume that the above mentioned exceptional case is valid: However, the risk of discrimination (and thus also the obligation to obtain approval from a higher-level or subsidiary body) does not apply if there are no other shareholders in the AG in addition to the body that has concluded self-contracting. The Federal Supreme Court has rejected the additional requirement that, in addition to the absence of further shareholders, there must also be no corporate creditors. Sole shareholders are therefore free to enter into individual deals. Therefore, such a contract should be legally ok. Finally, to be considered: As part of the reform of the GmbH, the company law (Art. 718b OR), the GmbH law (Art. 814 Para. 4 OR) and the cooperative law (Art. 899a OR) introduced the requirement of written form for contracts that the representative of the company concludes with himself, with the exception of contracts which do not exceed CHF 1,000.
(IANAL, of course) My employer tells me that EVERY professional activity belongs to the company and for EVERY activity I mentioned before I need to get written permission, That's true for software (and inventions) that may be relevant for them, but not for other professional activities. which could be withdrawn at any moment. No, not in that very general sense. they can give the permission to publish possibly relevant pieces of code on SX, and they can withdraw that permission for the future. But they cannot take it back for the past. Once they tell you they don't want your invention, there's no way back from that decision (and there are legal deadlines for claiming relevance). Even if they require written permission for you to take a side job, they must give it unless they can show a valid reason against you taking the side job in question. And that would be a per-side-job decision. And it doesn't matter if I do it on my free time on my computer at home or not. That is indeed the case for copyright of software and for inventions. clause is to protect your employer from you helping anyone who is their competitor/you being their competitor while the employment lasts. This is pretty standard and, I believe, not only legal but would be the case also if they had not spelled out this to you. The lines between what is and what is not competition are sometimes a bit complicated* So, if your employer specializes in subway station surveillance systems and you work on face recognition and then help out your local pigeon breeder's association by implementing automatic door opening by camera + automated face recognition of the [unwinged] members that's close enough to touching the interests of your employer that I'd consider it off-limits unless you had talked to your employer and they are happy with this project (after all, they could be preparing similar products unknown to you). OTOH, overhauling the crappy Excel macros for the regional annual breeder's competition would be fine. And in general, the lower your position there and the further from the actual focus of the company, the more normal it is to have another job (think janitors, canteen staff of a software company as opposed to a janitor in a hire-a-janitor-service company) The general duty not be in competition with your employer also in general prevents you from being involved in a competitor business to the extent that you have noticable influence over that competitor. So the second part of clause 1 shouldn't be too surprising, neither. (update) OTOH, what may make this particular clause invalid is the requirement also for publicly traded shares that they cannot come with voting rights. I somehow suspect that thus prohibiting you from "normal person small scale ownership" of publicly traded stocks (not all of them even have non-voting shares) is undue and invalid (too broad a restriction). However, if that clause is invalid the legal default of "no competition to employer" still applies. Here's a (German language) web site of a lawyer that discusses these questions See also here https://www.hensche.de/Rechtsanwalt_Arbeitsrecht_Handbuch_Wettbewerbsverbot.html Unlike the 1st clause, this is AFAIK not a spelled out default of German employment law, but it may be a spelled out version of a Tarifvertrag (unionized group contract). In any case it is probably legal to have this clause in the contract. The point is that the employer can only forbid the side job if it is against their reasonable interests, a general "no side jobs whatsoever" would be invalid. Side note: they may even be of the opinion that employment law forces them to have some such clause: the employer has a legal responsibility to ensure that you are not working more than the number of hours allowed by law. I've had such a permission that stated the constraint that the permission is valid only as long as I ensure that I stay within those legal limits and my working ability for employer is not compromised. https://www.hensche.de/Rechtsanwalt_Arbeitsrecht_Handbuch_Nebentaetigkeit.html https://www.fachanwalt.de/ratgeber/nebentaetigkeit-als-arbeitnehmer-anmelden-zustimmung-und-muster-antrag https://www.haufe.de/personal/arbeitsrecht/top-thema-nebenbeschaeftigung/nebentaetigkeit-und-arbeitsrecht-was-erlaubt-ist_76_418602.html Copyright law for employees in Germany is somewhat difficult. the one exception is copyright of software where §69b UrhG transfers the transferrable rights automatically to the employer. Whether the software is written out of office and outside working hours is irrelevant, as long as it is done in "fulfillment of the employee's role or the employer's orders" (famous court case) so again, if at work you code facial recognition systems and in the evening the pigeon breeders accounting system, the latter is not related to your work. Your open source game is also OK unless you are employed as game developer. Also that not all code is subject to copyright. An obvious explanation on SX explaining a typical pattern would not be a creative work (though the full answer may very well be) in the first place. But for creative works other than software such as plans how to implement features, technical drawings, etc. working hours or not seems to be more important for assigning the rights and the rules seem to be more similar to employee invention law ArbnErfG): if it is outside working hours and possibly relevant for the employer, the employee has to offer it to the employer before trying to sell to someone else. The clause that employer must give permission to publication of content that is possibly relevant for them seems to me to be in line with these general rules. https://www.zeit.de/karriere/beruf/2011-06/arbeitsrecht-urheberrecht https://eventfaq.de/25510-urheberrechte-im-arbeitsverhaeltnis/ http://www.urheberrecht-leipzig.de/urheberrecht-nutzungsrechte-des-arbeitgebers-an-kreativen-leistungen-der-mitarbeiter.html * I've been advised in a situation where I still believe I was not competing, and even had a written permission, that this is the stuff that makes lawyers rich, and both employee and employer poor.... Take home message: even if you believe to legally have the right to publish on SX/contribute to an open source project, think again whether you'd want this to be the source of a conflict with your employer - or whether there isn't a win-win possibility that makes everyone happy instead. What is the most legal way to participate in public activities in such situation? I'd advise to be open about what public activities you'd like follow. Whatever the contract says, your employer can always give your more permissions. In the past, I've found the majority of employers being happy to see me contributing (some had similar clauses to yours and just wanted to know, some was happy about an open source project I brought, some like to be able to say where their employees volounteer, etc.). Although there was one who wasn't (and that did contribute to my decision to leave there). From that experience, I'd personally discuss this early on now: in case the employer turns out to be too intrusive (speak to Betriebsrat or lawyer or your union if you have one to make sure they really overstep their rights) for my liking, for me that would be a reason to cancel the contract which is easier &amp; faster during probation period.
This can't be right. If I modify open source code as part of the work done, by nature of the open source license that code can not become intellectual property of the client. Certainly it can. That which is "developed or produced" would be the modifications to the pre-existing code, i.e the copyright on the derivative work so created. If the base code was under a share-alike or copy-left license, then the client can only distribute it under the same license (or a compatible one, perhaps). But nothing compels the client to distribute it, and for the client's use, the client owns the copyright, without fear of any future claims by the contractor. If I have my own code/scripts/settings/templates/etc that I use as a contractor, and I modify those in the interest of coding efficiency in the interest of serving the client, it hardly seems correct that these assets become property of the Client. Those are your work, and you can choose whether to sell the copyrights to the client or not. Again, only the work done for that client would be covered under the wording quoted above, unless there is another provision that grants the client a license to use the pre-existing work which you modified for the job, which there probably ought to be. Or I suppose the agreement could assign copyrights in pre-existing work to the client, but that seems an odd choice, and the language in the question would not do that. You and the client could agree on a different provision such as: The contractor grants to the client a fully-paid, non-exclusive permanent license to use all intellectual property developed under this agreement, and any pre-existing works that may be incorporated therein. The contractor warrants that s/he is entitled to grant such license, without infringing on the intellectual property of any other person or entity. That wording would have the contractor retain all copyrights and other IP, but provide a license to the client to use it without further payment or expiration. Many other ways to structure such a provision are possible, dividing the rights up however the contractor and client can agree. The price for the work might vary depending on what rights the client obtains. Both forms, and many others, are perfectly legal, it is just a question of what the contractor chooses to sell, and what th4e client chooses to buy.
According to US law, the GPL is a license, not a contract. This means it is valid without consideration, it also means if you are in violation of the license, then you are committing copyright infringement, instead of being in breach of a contract. In Germany, the GPL is a contract. And that's fine, because German law doesn't require consideration for a contract to be valid. It's interesting in that the GPL license doesn't require you to state whether you agree to the license/contract or not. But if you don't agree to the contract then there is no contract, and you have no right to use the software.
You can license the use of your IP only for certain uses, for example (most commonly) &quot;non-commercial&quot;. The general template of permission is &quot;You have permission to ___ as long as you ___&quot;. What the user is permitted to do, in your scheme, is something along the lines of &quot;only distribute the output in this manner&quot;, or &quot;not distribute code developed with this tool anywhere else&quot;. It's up to you to prove that someone violated that condition, if they did.
If you operate from outside Germany but within the EU, it is generally sufficient to satisfy your own country's regulations. This is a foundational principle of the EU single market, though it's not quite realized yet and has exemptions for consumer protection purposes. However, the German TMG law which includes the Impressumspflicht explicitly enshrines this principle. So from the German Impressumspflicht perspective, you're good to go. However, you will not be able to operate anonymously, because of your country's laws. GDPR requires you to clearly state your identity and contact details in your privacy notice. If you engage in internet-based commerce, the EU eCommerce Directive will have caused your EU member state to pass legislation that requires you to disclose: your name the geographic address where you are established contact details incl an email address if applicable, registration numbers from trade registers or similar if applicable, your VAT ID Note that you must have a VAT ID for cross-border B2B sales within the EU. You state that you are not selling anything via your website, and are instead collecting payments via another website. What the consequences of this are would depend on the laws and caselaw in your jurisdiction, but you will have to make these disclosures on at least one of the two websites. About Germany going after bloggers who show ads: income from ads is taxable income, and operating a business requires registration. However, the German Impressumspflicht is rarely enforced by the state. Instead, other market participants (competitors) trawl the internet for potential violations and then send a cease-and-desist letter. They can do this because skirting legal obligations distorts the level playing field, which harms those competitors. There is a thriving cease-and-desist industry built around this, but it only affects businesses that operate within Germany.
There would be both copyright and trademark issues here. See U.S. Trademark Law - USPTO for law adn rules of practice related to US trademarks. See 17 USC for US copyright law. Trademark &quot;Monopoly&quot; is, I understand, protected as a trademark for a board game. It is currently owned by Hasbro. Any name which would be likely to confuse reasonable people into falsely thinking that the new game was authored or approved by the makers of the game Monopoly, or came from those makers would be trademark infringement (unless done by permission). However, a name can allude to another name as long as no market confusion nor any dilution results. Under 15 U.S.C. § 1066 a mark which is &quot;likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive.&quot; may be grounds for an interference which can prevent registration of the newer mark. 15 U.S.C. § 1125 provides that: (a) (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— (a) (1) (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (a) (1) (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. ... (c) Dilution by Blurring; Dilution by Tarnishment.-- (c) (1) Injunctive relief.--Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. (c) (2) Definitions.--(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: (c) (2) (A) (1) (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. (c) (2) (A) (1) (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (c) (2) (A) (1) (iii) The extent of actual recognition of the mark. (c) (2) (A) (1) (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. (c) (2) (B) For purposes of paragraph (1), `dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (c) (2) (B) (i) The degree of similarity between the mark or trade name and the famous mark. (c) (2) (B) (ii) The degree of inherent or acquired distinctiveness of the famous mark. (c) (2) (B) (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (c) (2) (B) (iv) The degree of recognition of the famous mark. (c) (2) (B) (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (c) (2) (B) (vi) Any actual association between the mark or trade name and the famous mark. The word &quot;Monopoly&quot; as applied to games surely counts as a &quot;famous martk&quot; an so one must avoid confusion as well as &quot;Dilution by Blurring&quot;. A game called &quot;New Monopoly&quot; is obviously intended to refer or allude to the existing game. Moreover it seems &quot;intended to create an association with the famous mark&quot; Such a mark might well constitute Dilution by Blurring. It might be wise to choose a name that is not as similar to the trademarked game, and is not as clearly and directly associated with the existing game. It might be wise to consult an experienced trademark lawyer as to whether any such name was close enough to an existing mark, particularly a famous one, to run a risk of a dilution or an infringement action. One should note that a clear disclaimer, stating that a game is not affiliate with an existing game (or other product), and is not a product of that game's owners, nor approved or sponsored by those owners, can help avoid an infringement or dilution action. Previous Suit According to the Wikipedia article, &quot;Monopoly (game)&quot; (citations omitted): Economics professor Ralph Anspach published Anti-Monopoly in 1973, and was sued for trademark infringement by Parker Brothers in 1974. The case went to trial in 1976. Anspach won on appeals in 1979, as the 9th Circuit Court determined that the trademark Monopoly was generic and therefore unenforceable. The United States Supreme Court declined to hear the case, allowing the appellate court ruling to stand. This decision was overturned by the passage of Public Law 98-620 in 1984. With that law in place, Parker Brothers and its parent company, Hasbro, continue to hold valid trademarks for the game Monopoly. However, Anti-Monopoly was exempted from the law and Anspach later reached a settlement with Hasbro and markets his game under license from them Copyright The concepts and procedures of a game, the so-called &quot;game mechanics&quot; cannot be protected by copyright. Specifically 17 USC 102(b) provides that: (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. So having a game in which tokens representing players move around a board, buying and selling properties, paying and collecting rents, and so on, is not protected by copyright. The artwork of any of the various editions of Monopoly would be protected by copyright, and may not be copied or imitated without permission. The layout of the board might be protected, depending on how original it is judged to be. However, the original version on Monopoly called The landlord's Game dates from 1903, and any copyright in it has expired. Only new, original elements first published in 1925 or later would still be protected by copyright. Most of the layout elements are probably now in the public domain. Visual elements of modern editions may well still be under copyright. Conclusion Creation a new game that has some resemblance to Monopoly can probably be done without infringing any IP rights, but care would need to be taken to make it visually distinctive from any protected edition of the game. A name thatr was not similar enough to the existign name to involved &quot;blurring&quot; the existing trademark would need to be chosen. I am doubtful if &quot;New Monopoly&quot; is sufficiently distinctive.
That a computer language is proprietary does not mean that all code written in that language is copyrighted by the holder of copyright on the language. Anyone may write, and publish, code in a particular language without permission from the language designers, or anyone else, provided that the code is original and is not a close paraphrase of code written by someone else. If the code to be published was created by someone else, permission would be needed unless the code falls under fair use or some other exception to copyright. Permission might or might not have to be paid for.