14 min read
The demand for technical talent, and the ease with which information can be shared, has increased entrepreneurs’ reliance on business relationships with outsiders. It has never been easier for an entrepreneur to find, meet, communicate and eventually enter into some sort of business relationship with an individual or company that is otherwise not associated with the business.
Moreover, sky-high valuations and fairytale overnight success stories have fueled the notion that even a basic idea can be worth millions, if not billions, in a relatively short time. In light of these factors, you might presume that Non-Disclosure Agreements (NDAs) have been widely accepted in the tech world as a means to protect sensitive and potentially valuable information from theft and abuse. Not so fast.
Before jumping into the debate, though, it helps to have a quick understanding of what an NDA is, what one looks like and, eventually, what to look out for if you’re asked to sign one as a freelance software developer.
What Is A Non-Disclosure Agreement?
An NDA is exactly what its name implies — a legal agreement between two or more parties that (i) defines certain confidential information that will be disclosed and (ii) imposes a legal obligation on the receiving party to keep that information confidential. NDAs are most commonly used when a business relationship between two companies or individuals requires the sharing of confidential information.
Company A, a local retailer, has hired ABC IT Co. to build an online inventory and order management system. To build the system, Company A must provide ABC IT Co. with a list of Company A’s suppliers and certain pricing information. Before disclosing its supplier list and pricing information, Company A asks ABC IT Co. to sign an NDA forbidding ABC IT Co. from disclosing or using Company A’s confidential information.
If a party to an NDA breaches the agreement, by disclosing or using confidential information for example, the other party to the NDA may sue the breaching party for monetary damages (compensation for lost profits or business), injunctive relief (a court order requiring the breaching party to refrain from taking some action) or specific performance (a court order requiring that the breaching party take some specified action).
So What Do Software Development NDAs Look Like?
NDAs are negotiated legal agreements that can be as simple or as complex as the parties desire. An NDA can be a one page fill-in-the-blank form or a lengthy document drafted from scratch to reflect the unique circumstances of the parties’ relationship, the different negotiating leverage of each party, and the nature of the information that will be disclosed.
Although there is no such thing as a one-size-fits-all software NDA, for purposes of this overview, and to understand generally how NDAs work, it’s important to appreciate the three “main-event” provisions that are common to all NDAs.
(a) The Definition of Confidential Information:
The definition of “Confidential Information” will set forth the type of disclosed information that is subject to the limitations on use and disclosure and, importantly, the type of disclosed information that is not subject to such limitations.
(b) The Term of the Recipient’s Obligations
The term of an NDA sets forth the time limit on the parties’ obligations. The term of an NDA may be measured in days, weeks, months or years depending on the circumstances of the relationship and the nature of the disclosed information.
(c) The Limitation on Use and Disclosure:
This provision will describe what a recipient party may do and what a recipient party may not do with disclosed information that falls within the definition of Confidential Information. This provision will almost certainly forbid disclosure of Confidential Information, but may also limit the use of Confidential Information and, in some cases, require that the recipient take certain affirmative steps to protect the confidentiality of Confidential Information.
The NDA Debate: Should You Ask For An NDA? Should You Sign One?
Although NDAs have been around for as long as there has been information worth protecting, the high-tech startup boom has thrust their use into the limelight and sparked a debate as to their value. As an industry that is highly dependent on data and constantly evolving technology, one would think that the high-tech startup world would embrace the use of software development NDAs. To understand why that isn’t the case, and to better gauge whether you should ask for an NDA or sign one presented to you, consider the following:
NDAs Are Often Unilateral
NDAs are unilateral when the business relationship requires that only one party disclose confidential information (rather than a mutual exchange of information by each party).
A startup seeks to hire an engineer to build its mobile app and has asked the engineer to sign an NDA. The startup will disclose information to the engineer, but the relationship does not require the engineer to provide confidential information to the startup. The NDA will be unilateral and will impose legal obligations, and potential liability, on the engineer only.
Because only one party is exchanging confidential information, only one party (the recipient party) has a legal obligation to comply with and, as such, only the recipient party is subject to potential liability. What an entrepreneur might view as a means by which to protect an idea, an NDA recipient might view as a one-sided contract.
Entrepreneurs Often Overstate the Need for an NDA
There are surely circumstances where NDAs make sense. Customer lists, pricing information, proprietary formulas and algorithms might have intrinsic value that is best protected by an NDA. Many argue, however, that some entrepreneurs are NDA trigger happy and think that every idea is worthy of legal protection. Ideas though, it is argued, are rarely new and, moreover, often have no value without execution.
NDAs should be asked for only when there is something worth protecting, and many argue that an idea alone does not warrant asking for an NDA. Finally, those most often asked to sign software NDAs – investors and engineers – rarely have any interest in stealing an idea when doing so would likely ruin any professional goodwill and reputation they’ve earned in their respective professional communities.
NDAs Indicate Mistrust
In a perfect world, business would be business and would never be personal. In reality, though, business is often about perception. What might be “just a contract” to an entrepreneur asking for a software development NDA, may be perceived as an indication of mistrust and a questioning of personal integrity by the person being asked to sign one. NDAs are most often requested at the outset of a business relationship, signaling mistrust and calling into question one’s professional integrity may start the relationship off on the wrong foot—even if that wasn’t the intention…perception is powerful.
This issue is less of a concern for business relationships where both parties will be disclosing confidential information and, thus, an NDA will be bilateral and both parties subject to legal obligation. Outside of strategic joint ventures, partnerships, mergers and similar arrangements, however, bilateral exchanges are rare and unilateral NDAs are much more common.
NDAs Can Limit An Information Recipient’s Ability To Earn A Living
As discussed earlier, an NDA defines a set of information that is to be considered “Confidential Information” and then specifies what a recipient may and may not do with that information during the term of the NDA. Whether an NDA is three pages or three-hundred pages, no contract can predict and plan for every possible circumstance and this limitation often works against the recipient of disclosed information.
What if, after signing an NDA, an engineer is asked to build a similar product or to execute a similar but technically different idea? Is using similar code on a different application a violation of the NDA’s non-use provision? What if the engineer learned new skills during the engagement? Can the engineer use those skills for another client? Can the engineer list the client on his or her resume?
There is a real concern that signing even one NDA, whether as an engineer, an investor or otherwise, can drastically shrink one’s pool of potential business. At worst, signing an NDA might foreclose a person’s ability to work on even slightly related projects. At best, signing an NDA complicates future business development efforts as every new opportunity requires a time consuming analysis of conflicts and liability under each and every NDA that the person may be subject to.
Enforcement Isn’t Cheap
The whole point of entering into an NDA is to have some legal remedy if the recipient party discloses confidential information in violation of the agreement. An NDA gives a disclosing party a basis to file a lawsuit seeking money damages and/or a court order against the breaching party. What many NDA proponents don’t fully appreciate, however, is the cost of enforcement.
Filing a lawsuit can be extremely costly and time consuming. A lawsuit for breach of contract will very likely require hiring a lawyer to gather evidence, assess possible legal claims, file the initial complaint and supporting documents, depose the allegedly breaching party and any witnesses and related parties, and argue the case before a judge. Lawsuits can take years, and lawyers typically charge by the hour. Before asking for an NDA, one should assess whether the information to be protected is more valuable than the potential cost of enforcement.
Though the above factors have contributed to a move away from NDAs in the startup world, NDAs are not without their value. Whether you should ask for an NDA before disclosing information, or agree to sign one if you’re on the receiving end of the equation, depends on the particular circumstances of the intended business relationship and each party’s motivation to enter into the relationship. The more valuable the relationship is to a party, the less leverage that party has to negotiate for or against the use of an NDA. The less valuable the relationship is to a party, the more leverage that party has to get its way or walk away. This push and pull is at the heart of all negotiations, the party with the better “Best Alternative to a Negotiated Agreement (BATNA)” has the upper hand.
If You Must Have An NDA…
So what if you’re an engineer and the opportunity to work on a particular project outweighs the risk of signing a software development NDA? What if you’re a startup and the intrinsic value of your information justifies the need for an NDA, despite the difficulty of finding an engineer that will sign one? If you have to sign an NDA, or if you must ask for one, what are some of the things to look out for and consider?
As is always the case, I strongly suggest seeking the guidance of a competent and licensed attorney. Contracts can get complex quickly and legal rights and obligations shouldn’t be left to “winging it.” As you’re finding an attorney, though, you can start by reviewing the some of the NDA’s main operative provisions. The following are a few preliminary things you might consider when presented with or requesting an NDA:
1. Definition of Confidential Information
Recall that this provision defines the type of disclosed information that is subject to the confidentiality obligations of the NDA and, as such, it should reflect the nature of the business relationship and that of the information to be disclosed.
If you’re a disclosing party, you’ll likely ask for a broad definition of Confidential Information to cover everything that might be disclosed to the receiving party during the course of the relationship. If you’re a receiving party, however, you might resist this request and seek instead to narrow the definition to include only specifically designated information such as, for example, written information that is marked “Confidential.” Regardless of where the negotiations come out, the parties should think carefully about striking the right balance between a definition of Confidential Information that is too broad (and thus extremely restrictive to the recipient party), on the one hand, and, on the other hand, too narrow (thus minimizing the protective effect to the disclosing party).
Though it’s important to determine the information that is to be held in confidence, it is equally important to “carve-out” certain information that is not subject to the confidentiality provisions. Common examples of such carve-outs include information that is or becomes publicly available and information that is lawfully known before entry into the business relationship.
2. Term of Confidentiality
The term of an NDA should reflect the nature of the parties’ business relationship and the nature of the information to be disclosed. If the relationship is limited to a one-year engagement, it might not make sense for the term of the NDA to extend too far after termination of the relationship. Similarly, certain types of information become less valuable or sensitive over time. Financial statements, for example, may be particularly valuable at and immediately after the time they are prepared, but probably don’t accurately reflect a company’s financial health months or years after their preparation. If information is of a type that decreases in value or sensitivity over time, a long term is likely not necessary.
3. Disclosure to Representatives
As discussed throughout this article, NDAs are typically signed by a single disclosing party and a single recipient party. The problem, though, is that a recipient party may not always work alone and, rather, may from time to time need to disclose information protected by an NDA to such recipient party’s colleagues, employees or representatives in order to carry out the terms of the business relationship.
David Developer has signed an NDA with BigCo to create a mobile app for BigCo.
During the project, David needs to enlist the help of his colleague, Peter Programmer, to write some code in a language that David is less familiar with. Peter has not signed an NDA, can David disclose information to Peter so that Peter can assist with the project?
Rather than go through the hassle of signing a new NDA for each new person to whom information needs to be disclosed during the course of a project, or trying to predict ahead of time every person to whom information may need to be disclosed, the parties to an NDA may include a representatives provision addressing permitted disclosures to certain defined persons.
The representatives provision is straightforward from a drafting perspective and is simply a definition of “Representatives” that specifies the persons or classes of persons to whom confidential information may be disclosed. A recipient party will likely want the definition to be broad and inclusive of any person with whom the recipient party may collaborate. The disclosing party, of course, will likely want to keep the definition of Representatives as narrow as possible to permit the project to move forward, on the one hand, while maintaining the protections of the software development NDA, on the other. Finally, the disclosing party will very likely wish to include a clause providing that, prior to any disclosure of confidential information to a Representative, the recipient party inform such Representative of the confidential nature of the information and of the terms of the NDA. A representatives clause may look something like the following:
During the Term of this Agreement, the Recipient Party will not disclose the Confidential Information to any person other than the Representatives, provided that, prior to any such disclosure to a Representative, the Recipient Party informs such Representative of the confidential nature of the information and the terms of this Agreement. “Representatives” shall include the employees, independent contractors, partners, agents and other third parties that are or may be engaged by the Recipient Party for purposes of the Project.
4. Non-Disclosure v. Non-Use
This is a big one. As mentioned earlier, NDAs will almost always include a prohibition on disclosure of Confidential Information. Some software NDAs, however, will also prohibit or limit use of Confidential Information. For example:
The Recipient Party agrees that, during the Term of this Agreement, the Recipient Party will not (i) disclose the Confidential Information to any person other than its Representatives and (ii) will not use the Confidential Information for any purpose other than for those purposes directly related to the Project.
Depending on the term of the NDA and the type of information disclosed, restriction on use may not be an issue. If the term is particularly long, however, or the definition of Confidential Information particularly broad, the “use prohibition” may be extraordinarily restrictive on the recipient party. For example, consider the following definition of Confidential Information:
“Confidential Information” includes (i) all information furnished by the Disclosing Party to the Recipient Party, whether furnished before or after the date of this Agreement, whether oral or written, and regardless of the manner in which it was furnished, and (ii) all analyses, compilations, forecasts, studies, interpretations, documents, code and similar work product prepared by the Recipient Party or its Representatives in connection with the Project.
What this means is that, for as long as the NDA is in effect, the Recipient Party cannot disclose or use any information that the Disclosing Party made available to the Recipient Party or any information prepared in connection with the particular Project. Without any carve-outs or qualifications, these clauses could be incredibly limiting.
An engineer signs an NDA which includes the two provisions set out above. During the course of the Project, the engineer learns a new way of putting together common strings of code. The new method could be considered work product that was prepared in connection with the Project and, as such, the engineer may be prohibited from using the method in future projects during the term of the NDA.
Before hearing Startup A’s pitch, an investor signs an NDA which includes provisions similar to those set out above. During the pitch, Startup A reveals its most recent financial statements and its strategy for growth. The investor does not invest. A few months later, the investor is approached by a similar startup, Startup B, and asked to attend a pitch. The investor may be precluded from investing in Startup B as doing so might involve use of information learned during Startup A’s pitch, even if only remembered by the investor.
The above examples are admittedly extreme, but are used to stress the point that the combination of a broad definition of Confidential Information, an unnecessarily long term, and restrictions on use can be paralyzing. Additionally, these are by no means the only red-flags that can sneak into an NDA and what might be a red-flag for one NDA may be perfectly tolerable for a different business relationship.
So What Do I Do…Specifically?
Though you might now have a better understanding of what an NDA is, what a software development NDA might look like, and why many in the tech world are reluctant to sign them, you might still be wondering what, specifically, you should do when on the receiving end of an NDA. There is no substitute for the advice of a competent attorney, but, with an understanding of the concepts discussed in this article, you can approach the first read of an NDA armed with some knowledge as to what is most important to watch for:
Is this a bilateral or unilateral NDA? Will both parties be disclosing information? If so, are the parties subject to identical limitations and requirements?
How broad, or narrow, is the definition of Confidential Information?
How long are the obligations in effect? Does the term of the NDA match the nature of the business relationship and the information to be disclosed?
Am I only prohibited from disclosing the Confidential Information, or disclosing and using the Confidential Information?
Am I permitted to disclose the information to my employees and colleagues who may assist with the project?
Is this relationship valuable enough to assume a legal obligation that can be enforced in a court?
Finally, the above considerations, and this write-up generally, are not solely for the benefit of those who may be asked to sign an NDA. Certainly, a recipient party should consider very carefully an NDA’s provisions before signing, but a party considering asking for an NDA, too, would be wise to consider these factors.
NDAs, like most contracts, have the most value, and are therefore most likely to be signed, when both parties are comfortable with the balance of risks managed by the NDA and the benefit to be realized by the underlying contractual relationship. By considering the perspective of the recipient party, a party asking for an NDA may be better able to tailor the scope of an NDA to match the business relationship and present to the recipient party a fair and balanced agreement.
Though the information in this write-up should give you a good starting point, there is a lot to consider when asking for or presented with an NDA. A competent attorney can work with both parties to draft an NDA that is protective to the disclosing party, without being overly restrictive to the recipient party, and help move the parties towards a mutually beneficial business relationship.
If you want to learn more about legal issues faced by startups and developers, I suggest you check out Startup Law Hacks as well.
Disclaimer: the contents of this article were written and are made available solely as general information and for educational purposes and not to provide specific legal advice of any kind or to establish an attorney-client relationship. This article should not be used as a substitute for competent legal advice from an attorney licensed in your jurisdiction. This article has been written by Bret Stancil in his individual capacity and the views and opinions expressed herein are his own.