Accused of violating NDA on thesis [closed]

Question

I received my degree in Mathematics last year and spent my last semester working on my master's thesis. The topic was of interest to a private company, so I joined a project (4 months) partially funded by them. The final thesis that I presented to my university was purely mathematical, I had no sensitive information of any kind. The thesis included many different topics and it was far from being anything publishable at that state.

After I graduated, I was very interested in continuing with the company. They declined despite my insistence, as they were not satisfied with the project's results. After that, we never talked again and everybody moved on with their lives.

Following my graduation, I continued pursuing one of the topics (again purely mathematical) discussed in the project. I ended up working with other researchers who published a related article in the past, and who were eager to unite efforts. Fast forward 10 months, we managed to get a decent article.

I contacted one of the guys from the firm and showed it to him recently, as I wanted him to recommend me for a graduate application. Thought of this as proof of my hard work, as a proof that I am somebody worth endorsing.

Quite the contrary, he began saying many offensive things. Among them that I (and even the coauthors, he dared to say) will get banned for life in publishing for renowned journals, as I was violating an NDA that I signed. The only way for him not to pursue it would be if he appears as a coauthor (even mentioned bringing another guy from the company as another author). He basically treated me as somebody unethical who published stolen ideas.

Trying to think about it as objective as I can, I can come up with the following arguments:

His points:

• Between the thesis and the newer article, there is one common topic.
• On that specific topic, some ideas were born during the project time.

My points:

• Again, I don't work with any sensitive information of any kind. So it's not like I am publishing any company's secrets or anything close to that.
• Sure, they introduced me to the topics, but I consider the contributions (corresponding to the overlapping topic) mine. Because the end of the project (and thesis' deadline for submission) was approaching, we didn't have time to discuss them. I presented these ideas in the final draft and when they reviewed it they didn't find any gaps in my arguments. After this we never talked about them again.
• The article is extensive, most of it are ideas that were the fruit of correspondence with the coauthors. Also, even on that repeated topic, the proofs are different and formally prooves statements that were posed as mere conjectures in the final draft.
• Work is my master's thesis, so I am sure anyone from the university can read it. So as a former alumnus, why a citation is not sufficient?
• In the acknowledgments section of the article, I recognized the support of the company.

Just pisses me off that they gave up on the project but I did not. It would be very unfair that after all this subsequent effort, that they appear as equal contributors. Nobody reached out to me ever again, and now when we have something, they want to take credit. And besides, how could I bring up these new co-authors out of thin air to the actual ones? They are of course, unaware of this.

Despite my emotions, in the end I just want to do the right thing. I frankly do not know anybody who could advise me on this and hence I am posting it here. What is the best way to proceed in this case?

Answer 1

As they are accusing you of violating the NDA you apparently signed, you probably should stop communicating with them and seek legal advice. If you are currently affiliated with a university, contact their legal team. Otherwise, seek support from the legal team of the university you did your MSc at.

Answer 2

An NDA is a legal document managed by the company's legal department. This department will pursue or not pursue if it learns that there are concerns with the NDA.

The "somehow" in your case might be your ex-colleague.

I am writing "might" because technical people usually only have a vague idea of the NDA, and they would need to raise an alert with the legal team if they suspect a problem. Only at that point does the topic start.

They have exactly zero capacity to decide about this NDA and give you conditions. So whatever they say is not really interesting.

Now, they can alert the legal department out of spite, and then you have to discuss it with an attorney. Do not discuss it with the ex-colleague at all.

Answer 3

The company knew you were writing your Master's thesis on this work, and they had no objection to you disclosing that non-confidentially to your institution. So it seems to me rather unlikely that the company even imagined that the work was anything they wanted to protect under whatever NDA you signed.

This is especially so if your Master's thesis was "published" in any weak sense, even just a copy lodged with the library. It further seems likely that the same is true of your more recent paper, since it builds further on the same work (or work from the same project) that the company already consented to you releasing before.

Companies whose research is confidential will have that conversation before you leave, not after, because they want to stop you publishing the confidential information, not leverage the NDA after the fact for a trivial gain.

To-do list:

• Find another referee. Do not under any circumstances negotiate with this guy for a reference. It'd be tainted by his proposed quid pro quo.
• Distinguish in your mind the ex-colleague and the ex-employer. You signed an NDA with the ex-employer, not the ex-colleague. The ex-colleague is demanding co-authorship, not the ex-employer. Is he the CEO, who decides what the company cares about? I assume not. So if he's telling you that he will pursue the matter with the ex-employer unless you give him co-authorship, then this is bluster. The ex-employer would take a very dim view of him offering not to pursue it with them, since that would be him collaborating with you to breach your NDA, in return for a co-authorship that is beneficial to him and not them. If he's telling you that the ex-employer will pursue it unless you give him co-authorship then nah, it'd be the company's lawyers writing that letter. You could then take that letter to the other co-authors and the journal and say, "hey, look at this, what should we do?".
• The ex-colleague has threated some kind of enforcement of the NDA, if not explicitly mentioned a legal action. Keep all the emails to this point. Don't discuss the issue with him any further. Ideally you don't talk at all to people who have threatened you with legal action until your lawyer has spoken to their lawyer and advised you. The advice might be to continue not talking to them.
• Find someone who can advise you on matters of academic publishing. If you're not currently affiliated with an institution, try your former institution or perhaps even the co-authors and their institution(s). This threat is probably absolute nonsense, but it will make life easier for you if some qualified person can look at the specifics of the case and tell you the same things you've been told here in comments. There is no list of NDA-breakers that journals use to ban them for life. There is also no rule that everyone you ever talked to about a bit of work, is a co-author on every paper you write in future about that subject.
• Consider whether this former colleague's contribution to the original project actually deserves a co-author credit or not on this new work. This is something for the authors as a group, not for you alone. Arguably you may need the company's (not the ex-colleague's, the company's) express permission before you can even discuss his contribution with your co-authors. It's all under NDA, remember ;-)

I would suggest that you re-read the NDA you signed, except that it almost certainly is some boiler-plate thing whose language is extremely one-sided in favour of the employer, refusing you the right ever to say anything to anyone about anything involving the company. The question is not what it says, but what is enforceable. Find it, though (and any employment contract you had), because if you get as far as speaking to a lawyer then they'll need to see it.

"Just pisses me off that they gave up on the project but I did not. It would be very unfair that after all this subsequent effort, that they appear as equal contributors" - well, co-authors are never precisely equal contributors. Some contributed more work, or more crucial ideas than others. That's fine. Forget about that, focus on whether he meets the bar as an author. The fact he appealed to an NDA has no bearing on whether he contributed to the paper or not. Reserve your pissed-offness for the fact he waved the NDA at you! That's what potentially, if the threat is real (which it likely isn't) isolates you from your co-authors. They never worked there and never signed the NDA.

I suppose the worst case scenario here is if all the following happen:

• It's potentially bad if the company actually does care about the NDA, and does not want the work published.
• It's potentially bad if the NDA is even vaguely enforceable in your case, that is the academic work is somehow sensitive, and publishing it causes the company material harm. Failing to crediting the ex-colleague is not (I claim, in my unprofessional opinion) a material harm that needs protection via NDA. He can take that up himself with your co-authors and/or the journal if he wants.
• It's potentially bad if you never told your co-authors about the NDA (because it didn't occur to you it could be relevant), and they feel like you've opened them up to a problem that could get their article withdrawn (which is only if they think it is relevant and you should have known).
• It's potentially bad if you have nobody who can advise you in any official capacity, and can't afford to consult a lawyer of your own with experience of NDAs.

This all depends on details not provided here (and some that you can't provide to the internet at large). But, do what you need to, to establish that you're not in the worst case. Even if one or two of the "potential bads" is true, that still doesn't mean you're in any trouble. You'd need a lot to go against you.

Answer 4

Synopsis: if the NDA contains a clause about arbitration, you need to be careful

Unfortunately, you need to take the thread of being held in violation of the NDA seriously, even if there is no objective violation. NDAs often contain language that enforces arbitration, which is a process in which a corporation can cause the other party so many legal fees that a private person of limited means has to submit to illegal claims. Thus, you need to engage the help of the university through which you made the NDA. A private lawyer at this point is too costly. The university however has a duty to protect you since you were a student of your university when you signed the NDA as part of your student activities.

Second, as others have said, the employee is not speaking for the corporation and the extortion of you based on the NDA is not the company acting. If you talk directly to the corporation, or indirectly through your advisor, they might be astonished by the behavior of the employee, which could be a tort that could result in civil action by you. (Not that it would be worthwhile pursuing since you would need to prove negative consequences). The corporation would be the only one that can decide whether they would be seeing the publication a violation of the NDA. From what you tell us, this would be unlikely.

Third, even if you were held in violation of the NDA, your capability of future publication would not be restricted. This threat at least is not based on reality. However, if you would have violated an NDA by publication, a publisher would likely not want to publish that particular work.

The most likely outcome is that you are free to publish your results. Your co-authors could of course be sued in civil court, but the case is most likely to be dismissed before it comes to trial. This is because they do not have signed the NDA which an arbitration clause.