Clash of the GPL and Other IP Agreements?

Daimaou asks: "A situation I'm involved in at work has raised some questions regarding the GPL vs. IP agreements. When I started working for my employer several years ago I signed an IP agreement that states anything I think while working for them is theirs, as well as anything I've ever thought in the past if it enters their building; dumb, but I needed a job." To make a long story short: Daimaou wrote some code derived from GPLed sources. Now his company wants to take control over what he's written. IP agreements aside, this sounds like a GPL violation since the company's IP can't override IP already established by the original GPLed code. Daimaou also says the company is trying to patent at least some of the code. Is there anything Daimaou, or anyone else for that matter, can do to get the company to cut short their plans and play fair with IP that obviously doesn't belong entirely to them? "About a year and a half ago, I brought in some source code that I had worked on prior to working here; after receiving verbal OKs that the code would remain mine.

My code was derived from code I got from IBM's Developer Works website and also ActiveState's website; all of which was released under the GPL. I made a lot of additions to the software of my own, but the parts from the above sources were integral pieces and without them, my code wouldn't work.

Now, my employer is trying to lay claim to this software and has filed at least one patent on it that I know of. They have also distributed it but refuse to make the source public. They claim that because of my IP agreement, they have full rights to this source code.

I would like to hear what other readers think and perhaps get some suggested courses of action from people who are smarter with regards to law and the GPL than I am."

Comments

GPL holders own the code

[slashnutt]

Daimaou wrote the code prior to the IP agreement than the code isn't his to release to the company. The GPL license holders own it.

Re:GPL holders own the code

[slashnutt]

Whoops let me clarify:

Like I said, If Daimaou wrote the code prior to the IP agreement than the code isn't his to release to the company. The GPL license holders own it.

If Daimaou wrote the code after signing the IP agreement than he couldn't release code to GPL as he isn't the owner. The company owns that portion of the code; therefore Daimaou released the code illegally. Daimaou could potentially be held liable for any damages the company could prove due to the IP release. Furthermore, the code he introduced would have to be removed and possibly recoded. However, if the company wants to use any portion of the GPL code then said company is in violation of the original GPL'ed code.

The company can patent the new technology and can also decide to release the entire packaged software to GPL - these are the only two legal scenarios that can exist without rewriting the GPL code.

Re:GPL holders own the code

[schon]

If Daimaou wrote the code prior to the IP agreement than the code isn't his to release to the company. The GPL license holders own it.

Actually this is incorrect. Unless Daimaou signed the copyright over to the original authors, he retained copyright.

If Daimaou wrote the code after signing the IP agreement than he couldn't release code to GPL as he isn't the owner.

I think you mean "under the GPL", you do not release code "to" a license, you release code "under" a license.

And your statement is true, but is just a technicality - *he* may not release the code under the GPL, but his employer can, and in fact *must* release it under the GPL (if they're releasing it at all.)

Daimaou could potentially be held liable for any damages the company could prove due to the IP release.

Perhaps, it depends on his contract.

Re:GPL holders own the code

[imp]

Acutally it is more subtle than that. Diamanou has the absolute right to sign over his rights to the code he wrote. This is standard ownership agreement. He, of course, does not posess the right to sign over rights belonging to others, nor does the company have the right to assert ownership of those parts that are owned by third parties. Ownership of his rights aren't bound by the GPL, only distribution is. The current owner of the rights, whomever it might be, however is bound by the GPL (or a license that's similar enough to it to be compatable, eg they could distribute it under the GPL but also provide a warantee as an extra cost option) if they distribute the code.

So Diamanou broke no laws here. He didn't say he signed over other people's rights.

Please don't get license and rights confused. The GPL is a license, but does not fundamentally affect copyright of those parts added to it. That copyright, under international treaty, belongs to the person who wrote it. Since this a work with other people's intellectual property in it, that IP must be licensed, and presently is licensed under the GPL (unless the company has gone back to the original authors and gotten a copy under a different license).

Re:GPL holders own the code

[Spudley]

Diamanou does *not* possess the right to license his code in anything other than the GPL. In short, he has limited rights to his code; it is his IP, but has binding restrictons on it. It was the condition for his right to use the initial GPLed code. He has absolutely no right to break that license.

Correct me if I'm wrong, but the GPL only requires source code release if the software is released. If I make a modification to a GPL program, but don't release the program with those changes, I don't need to release the code.

In that case, Diamanou has full rights over the code he wrote prior to joining the company: provided he had never released it, he could keep his IP in whatever way he wanted.

The code written while he was at the company is not his; it is owned by the company, and the same applies to that as above. However, by sharing his previous code with the company, I would argue that he effectively released the code he had written earlier, and thus it becomes GPL code that must be released.

That is obviously in conflict with his employment contract. I don't know which takes priority here, but I suspect that the GPL would take priority, resulting in a breach of the employment contract.

Re:GPL holders own the code

[ShieldW0lf]

None of which helps Daimanou with his question: What should I do?

Contact IBM. Tell them your former employer is selling IBMs GPL'd code as their own, and that they are attempting to patent it as well. They are the ones whose rights are being violated. Perhaps they will come to an arrangement grant your former employer a different license, perhaps they will rape them in court. That's their decision.

Re:GPL holders own the code

[Rei]

It did *derive* - it originate with a close interdependence - with the code, and is thus bound. They could take the code and stick it in the middle of GORILLA.BAS or the declaration of independence; that doesn't change what it derived from. If his code, made by modifying existing source files, isn't derrivation, then nothing is.

Furthermore, the very fact that he did, at one point, distribute modified code means that he did accept the license. In fact, since there is no signature process to the GPL, the very way to indicate acceptance of the license is by modifying and distributing code (#5). You cannot just choose to ignore a license that you are under obligation to.

Re:GPL holders own the code

[Rei]

5. You are not required to accept this License, since you have not signed it. However, nothing else grants you permission to modify or distribute the Program or its derivative works. These actions are prohibited by law if you do not accept this License.

Distribution is not required; merely modifying the code indicates acceptance of the license.

Re:GPL holders own the code

[bladesjester]

There's something a bit more interesting that just the GPL'ed code in question here...

"When I started working for my employer several years ago I signed an IP agreement that states anything I think while working for them is theirs, as well as anything I've ever thought in the past if it enters their building;" (note: everything he has worked on in the past enters the building every time he does because it's all in his head.)

The wording concerning "anything in the past" is of real interest. It could be seen as the company trying to claim ownership of things which he did while employed at another company in the past. This, clearly, is not legal as it potentially violates the IP of every company he has worked for in the past and not just the IP concerened in this piece of GPL'ed code...

Just some food for thought.

hmm

[Triumph The Insult C]

anonymously tip off http://www.gpl-violations.org/?

Re:hmm

[ZephyrXero]

It won't be "anonymous" now that he's got it posted on Slashdot with his username listed...lol. Hope you're looking for a new job already, and from the sound of it...you don't need to work for scum bags like that anyway.

Re:hmm

[swv3752]

How many people in his company do you think modified some code gotten from IBM?

As far as what D should do:
First notify the copyright holders as to how the GPL is being broken. Depending on the code in question it might be derived from GNU so might want to contact FSF as well.

Second, Explain to D's company's lawyers as to how the company is violating a software licence. Regardles of who owns the copyright on the changes, it still needs to be distributed under the GPL.

In the future, get exceptions on paper and signed and dated. If you are writing code for a company, explain to your Boss how you want to use GPL software and how this will mean that the software you write will need to be GPL. It should be pointed out that only those that receive binaries need to receive the source though.

It is probably unconstitutional for a company to try and claim ownership of all your ideas though. However, as this sounds like the code was written at work for his job, then it is reasonable for the company to claim ownership of the code.

Re:hmm

[shotfeel]

How many people in his company do you think modified some code gotten from IBM?

I keep picturing individual programmers in companies all over the country being "called into the office" today to be interrogated about their post to /.

That's not how the law works

[hedronist]

This is actually a fairly clear cut situation. If your code is a derivative of GPLed code, then the derivative is under the GPL, regardless of any other agreements. Your company can either distribute the derived code or not. If they distribute it, they *must* obey the GPL.

If it were any other way, contract law would crumble. Imagine a world where some random Contract X (in this case, your IP agreement) can arbitrarily change the terms and conditions of some other random Contract Y (the GPLed code). A logical extension of this absurdity is that I could then write a contract with you that *somehow* changed a contract between two other, unrelated parties. The law doesn't work that way, no matter how much your Work Overlords would wish otherwise.

Re:That's not how the law works

[RupW]

If your code is a derivative of GPLed code, then the derivative is under the GPL, regardless of any other agreements.

OK, but any work he added isn't. The summary reads as if his code should be protected because it was linked to GPL code? As I read it (IANAL) they *do* have rights to all the code he wrote, whether it came into the building with other GPL code or not, but not the ActiveState/IBM portions of the code.

Let's assume he linked MyNewFile.c with GPLFile.c to make MyApp which he distributed under the GPL. He remains the original author of MyNewFile.c so he's free to relicence it, e.g. he could link it with BSDFile.c and sell the resulting MyCommericalApp without opening the source. The problem is that his IP agreement with his company gives them rights to MyNewFile.c when he brought it into the building - realistically the verbal agreement isn't going to stand up.

So they do have rights to DayJob.c and MyNewFile.c, and can patent them, but not GPLFile.c. If MyApp is already out there in the world as GPL then they likely won't be able to stop it or enforce patents on it since the OP was the legit owner of the code when it was released; however, if MyNewFile.c was *never* previously released then they probably now can stop him distributing it independently because he's no longer free to call it GPL without their permission.

Even if he didn't add any new files, just added some new lines to an existing GPL file, I imagine this still stands: once you've ripped out the original GPLed lines then the company own the rest.

Re:That's not how the law works

[MrLint]

Indeed this is no different than anything else.

Lets say for the sake of argument, someone stole some code from a popular OS platform, say windows NT4. And then made some changes to it. Is the company that person works for going to try and claim they own stolen property?

They cant try to patent or claim to own non-original work.

Re:That's not how the law works

[isometrick]

That would be the case for linked code under the LGPL right? For GPL, derivative works would include adding any amount of code to the original GPLed codebase.

Thus, the newly written stuff would still be protected no matter what context he wrote them in ... I think. I don't think there's too much case law to say how it would go in court, though.

Re:That's not how the law works

[corporatemutantninja]

I wrote a contract with my buddy that says full rights to the music on any of his CDs I rip automatically transfer to me. That overrides the label's ownership, right?

Anyone want some free music? I'll just give it all to Creative Commons now.

Re:That's not how the law works

[Rakshasa Taisab]

The parent is absolutely correct, the GPL license takes precedence. Whatever contract Daimaou made with the company does not trumph the GPL.

But what happens with the code that has been released? He thought he own the copyright but didn't (his company does). Can the company demand distribution of "their" code stop, since its distribution was not sanctioned by them? Or is it forever GPL'ed? Ofcourse this would be clear if the guy blatantly stole the code, but this case seems kinda grey to me.

Anyway, he is screwed and liable, and the company can't nullifiy the GPL for other peoples code.

Re:That's not how the law works

[DogDude]

Why does the GPL overrive the company's IP rights? The developer in no way should have used GPL code at this job, and I'd think that the developer would be (and should be) personally liable for using GPL code. If anything, the GPL people should be suing the developer for this situation.

Re:That's not how the law works

[Apreche]

IANAL just like 99% of the others here. However, in this particular situation wouldn't the code that was written by the employee belong to the company while the GPL stuff remain free? I mean, sure if they want to distribute the GPL derived code, they just obey it. But what if the code that the employee wrote was say, a Linux Kernel patch. Could they not distribute and patent this patch alone and separate from the kernel sources as its own product?

My general feeling is that somehow this employee violated their contact with the employer by using the GPL code. By agreeing all code you write belongs to someone else and then writing code that legally cannot belong to them you are somehow breaching the contract with the employer. i.e: if the company owns everything you think then you aren't permitted to work on open source projects. So the issue of who owns the code you did write for those projects is very confusing since it shouldn't have been written.

Re:That's not how the law works

[SirChive]

"If your code is a derivative of GPLed code, then the derivative is under the GPL, regardless of any other agreements.

OK, but any work he added isn't"

This makes no sense at all. The work he added IS inherently derivative of the GPL when he starts with GPL code. That's what derivative means.

The whole meaning of the GPL goes out the window if you can grab a bunch of GPL code, use it as a starting point for new code and then pull out the new code and claim it is not a derivative.

If you are extending, expanding on or improving GPL code by writing new code then everything you write is covered by the GPL.

Re:That's not how the law works

[iabervon]

You are right that anyone who got the code under the GPL retains the rights granted by the GPL. However, the company is claiming to have gotten the code by way of the employment contract, not the GPL.

Assuming the employment contract is valid, the company owns the copyright to all of the work done by the employee. In this case, they don't have to abide by the GPL, because they don't need a license of any sort for it. "You don't have to agree to the GPL, but nothing other than the GPL grants you the right to distribute the software" is the usual mechanism. If, however, something other than the GPL (such as owning the code yourself) grants you rights to it, the GPL doesn't matter. This is, however, not the case if the original author accepted substantial changes from somebody else, because that means that he didn't have sole copyright to give up. The other authors can put pressure on the company to abide by the GPL, because they own some of it. Also, if the author had assigned copyright to the FSF, the author couldn't give it to the company later, and the FSF could force the company to follow the GPL.

Additionally, the employment contract is probably not really enforceable; the author could claim that he still actually holds the copyrights, and the company is violating them.

As for the patent, it would be invalid if the program was published without a "patent-pending" notice a year before the application was filed. Not that validity of patents actually seems to matter these days, unfortunately.

Re:That's not how the law works

[rewt66]

Not quite. You said, "pull out the new code". The new code is copyright by the authors, under whatever terms they want. But if they distribute the GPLed code, then they have to distribute the sources to the GPLed code, and their new changes as well, under the GPL (presuming the new changes are part of "one thing" with the GPLed code, with "one thing" being defined by the GPL).

But if I take some GPL code, use it as a base for my new code, eventually separate my new code from the GPL code, do I still have to GPL my code? No, not even if I distribute it, because there is no GPLed code in the distribution. It doesn't matter that I looked at the GPL code. It doesn't matter if I linked to GPLed code for a while. It only matters if I distribute GPLed code as part of my distribution.

Re:That's not how the law works

[someme2]

This is actually a fairly clear cut situation. If your code is a derivative of GPLed code, then the derivative is under the GPL, regardless of any other agreements. .[...]

Okay so far, ...

If it were any other way, contract law would crumble. Imagine a world where some random Contract [...] can arbitrarily change the terms and conditions of some other random Contract Y .

True [1], but you can easily sign a contract X with entity A that forbids that you sign contract Y with B.
Then you go ahead and still sign contract Y with entity B. The contracts may be contradictory. But still both may be binding.

A typical case is an executive (working for company A) with full power to close deals up to a certain limit, say 100,000,- EUR. If this guy signs a deal with a volume of 200,000,- EUR (with company B) the contract may be binding for his company [2]. If the company looses money due to this, B can still insist on the contract to be executed.

To resolve the situation and to keep smoke from coming from everyone's ears - the executive becomes liable personally to his company for the loss. But that is of no concern to B. B doesn't care that the executive already had a contradictory contract with A.

Bottom line: The employer in the article can argue that the guy was forbidden to use GPL'ed code by the IP regulation in his contract with the employer. The GPL is valid for the produced software. But the coder is liable for any losses to his employer.

[1] There is a standing expression for this in German "Keine Verträge zu Lasten Dritter" (no contracts at the expenses of third parties) - what's the corresponding expression in English?

[2] Again... IANAL and I am not even English. So someone help me out with "Innenverhältnis" und "Aussenverhältnis".

Re:That's not how the law works

[Loconut1389]

Theres nothing wrong with using GPL code at your job.

I've been reading this thread and it appears that the debate is all due to the wording of the original poster. In any case, he did say that anything he wrote in the past became their's, IF he brought it into one of their projects, but only if.

Anyway, the company has rights to ALL the modifications he has made to the GPL code (even the ones before he worked there), and they can use that code in house or patent it (only the changes), but if they wish to sell it or otherwise distribute it, they have to follow the letter of the GPL.

Derivatives of GPL code are being sold all over the place, thats why they have to include a link to the GPL portion of the code or provide the actual code on the same cd.

IBM?

[mindstormpt]

If we're talking about IBM sources, try talking to them about it, maybe they'll be interested.

Move

[odyrithm]

"Is there anything Daimaou, or anyone else for that matter, can do to get the company to cut short their plans and play fair with IP that obviously doesn't belong entirely to them?"

Move to Europe before it's to late!

Original Creator

[DeathFlame]

Well it's easy. The original creator of the work is the one who 'owns' it. The GPL is a liscense, so if it is being violated, the owner should be contacted.

We Are Not Lawyers

[Anonymous Coward]

Even if we were, we could not give useful advice without full details.

Talk to a lawyer.

Sorry but...

[Anonymous Coward]

IANAL, but the way I see it, if they ended up in a court case, they would lose, as the code does fall under the GPL. However, they may find fault with you because you wrote the code under the GPL, which is incompatible with their IP contract. This could be construed as bringing in 'stolen goods' (not exactly), and they may sue you for losses.

Well...

[k4_pacific]

Well, it sounds like it wasn't yours for them to reappropriate from you in the first place. Bear in mind that IBM has a very huge legal team. Since, as you say, some of the code they are claiming as their own belongs to IBM, it might me in your best interest to get out of there before the Nazgul starts picking your company's flesh apart with pliers.

Comment removed

[account_deleted]

Comment removed based on user account deletion

Righting Wrongs

[Doc Ruby]

You can send your company's lawyer a copy of "their" code, the GPL'd code from which you derived "their code", and the GPL. You can ask the lawyer to write you an opinion stating that you are protected from the copyright owner of the GPL'd code you use making any claims against your company. And you can remember, while looking for your next job after they fire you, that you shouldn't both sign away rights, and expect to use them, when working for a bunch of thieving assholes.

Re:Righting Wrongs

[Taladar]

Actually IMO the fact that you are able to sign away rights on something you create in your free time in the first place shows a severe flaw in the system.

Re:Righting Wrongs

[CrankyFool]

You can ask the lawyer to write you an opinion all you want, but ... do you like your job?

The question here -- and I haven't seen a clear answer to this from what you wrote -- is: What are you trying to accomplish?

Are you trying to help your company stay out of trouble?

If so, you should write your boss and in-house counsel (if one exists) about this issue and note that you believe based on the GPL, based on your use of GPL software, and based on your understanding of contract law that the company is in violation if it proceeds down this road, and urge them to reconsider. If they choose not to, that's OK -- you can't make anyone do anything smart, you can just give them the information.

Are you trying to stay out of trouble yourself?

Frankly, I think you're not in trouble at all. You haven't broken the GPL. You haven't distributed any GPL-derived code under a different license.

Are you trying to make sure these guys don't break the GPL?

Then submit an anonymous tip, report these guys, try to get them sued, etc.

Your courses of action will differ depending on your desired outcome.

Get a lawyer

[ari_j]

The single best thing you can do is to find a good lawyer. Although you may personally be in violation of the GPL since it was your actions that brought about the violation (but see respondeat superior for why only your company can be sued for this, and not you personally), you may also have a claim that the oral agreement you entered into superseded your written IP agreement, or at least estopped your employer from violating the oral agreement and, by extension, the GPL.

But hire a lawyer. I am not a lawyer, nor is this legal advice. I just know what I know, and what I know is that a good lawyer will spot at least the things I've mentioned and probably more, and more importantly will know how to apply these ideas to cover your ass and, hopefully, keep your code GPLed.

Good luck, and again: hire a lawyer.

Re:Get a lawyer

[PhilHibbs]

Respondeat superior

The company's copyrights

[tigre]

Yeah, the company does have copyrights to the modifications Daimaou made, and any of those modifications, if separable in themselves such that no GPL-derivativeness remains, could be licensed however the company desires, but as long as the two are one, it must be licensed by GPL rules.

Re:The company's copyrights

[hedronist]

Without more specifics it's hard to say. Assuming that Daimaou is using the word 'derived' correctly and is not confusing it with the word 'linked', then it certainly sounds more like your second case.

I also note that LGPL was not mentioned anywhere. If this is a GPLed library (as opposed to an LGPLed library), then even linking propogates the GPLness. Of course, it's probably easier to rewrite something that only mates at the API level, rather than has 5,000 LOC intertwingled with the original code.

All things considered, I would say that the company would be wise to start talking to a *very* good IP attorney before they get their PR balls blown off. On the other hand, if they continue down this road, they might be doing the FOSS world a real favor by creating some nice, clean case law regarding the GPL.

Re:The company's copyrights

[blueskies]

You mean that proving the "viral" GPL can somehow override their rights to their employee's creations?

This is such an innane comment. It's like saying "you mean that proving federal copyright law can somehow override their 'rights' to their employees' creations?"

Imagine that, laws, contracts, and licenses might limit what a corporation can do? Yeah, i'm sure that is a nail in the coffin. No companies expect to be bound by copyright law these days.

Ownership vs. Licensing

[crow]

Yes, the employer owns the new code. However, the employer is prohibited from distributing that code under any license other than the GPL unless the code is independent of other GPL code not owned by said employer.

The GPL has nothing to do with copyright ownership. Hence, projects like the Linux kernel are owned by the many different contributers. This is important to understand, because each contributer needs to be sure to claim copyright on their contribution so that they have standing to complain if the license is violated.

Re:Ownership vs. Licensing

[wturky]

I agree with crow on this, with one clarification. The employer only owns the part of the code that was written by the original poster, since he signed away his rights. He couldn't sign away other people's rights, though, so unless the employer is going to remove the code they do NOT own, they should have to follow the GPL.

The best way to handle it is to look up and contact the actual author of the code that is being violated and let THEM (or their lawyer) contact the legal department of this company.

Get all concerned parties involved.

[FreeLinux]

Notify IBM, Active State, the original copyright holders and the FSF. Let them all know about the obvious GPL violations of their code.

You, fighting this alone, will almost certainly lose to your employer but, the involvement of outsiders could cause your employer to think twice about their pending actions.

Of course, following this advice will almost certainly result in your firing for any of a number of reasons so, you would be best served by also contacting a good lawyer, in advance.

verbal vs. written

[shark72]

"after receiving verbal OKs that the code would remain mine"

My comment won't be very helpful to the situation, but here goes:

If I understand it correctly, he signed a contract with an inventions clause when he started work at the company, but after he was hired, he was told verbally that the inventions clause would not apply to a particular project.

If I were in this position, I would put the onus on the person who made the verbal promise. Their response might be one of a few things:

1. If they state "yes, I did make that promise to you" then I would reply with "Great! Would you mind following me like a baby duck to the office of our head counsel, and repeating what you just said?"
2. If they claim never to have said that -- in other words, if they're lying -- then I would sneak in to the office late at night, install porn on their computer, and then tip off MIS. No, just kidding. But if I had a supervisor or co-worker who saw fit to lie to my face, I would have bigger issues with my job than the ownership of some code.

Please name the employer...

[(H)elix1]

Regardless of the legal merits, it speaks volumes about the corporate culture.

Draconian NDA's usually surface well into the interviewing process, so nice to not waste anyone's time with even looking at the company from an employment standpoint. Love to know who they are...

Re:Please name the employer...

[gr8_phk]

I make it a point to discuss IP agreements up front. I once inteviewed at EDS, and the HR person wanted me to look specifically at the IP one and some other document. There were many, but they singled out these two. Upon reading the "all your inventions (past,present,shower) are belong to us" and the "right to use my voice and likeness for any purpose" among other things, I asked if they could be changed. No. I left before the technical part of the interview. I had no job at the time, but the IP stuff was too restrictive for someone who writes code on the side.

I now work for a company where the IP agreement explicitly _excludes_ anything not directly related to my work for the company. Reading this one was a breath of fresh air. Still working there 4.5 years later.

Re:Please name the employer...

[chialea]

> "all your inventions (past,present,shower) are belong to us"

This one is especially fun when you're a researcher, moving between institutions. No, really, I don't have the ability to sign over joint work with other people to you by coming to work for you for a few months. Anything I work on with other people stays that way.

Of course, they did fix it, but I boggle that they even bother to leave it in there when they're a research LAB. They hire researchers. Researchers, especially temporary ones, can't or won't deal with that sort of thing. (Really, you can't have my thesis.)

Silly stuff on this level, I'm sure it's worse when they'd actually try to enforce something so stupid.

Lea

Contact a lawyer, or contact IBM.

[schon]

Seriously though, here's what my brain thinks of this:

IBM(?) owns the copyright to the Developerworks software.
Your employer now owns the copyright to the modifications you made.
If your employer has distributed your code, they must do so under the terms of the GPL.
Your employer may apply for (and even receive) patents on the modifications, but *cannot* restrict anyone from using them under the GPL (as per the terms of the GPL.)

If you know they're disributing the code, you should contact IBM.

This is not a GPL problem

[Mordac the Preventer]

So there's a dispute over ownership of the code you wrote. That's not a GPL problem, that's a contractual problem between you and your employer.

If your employer wins the dispute, they get no more right than you have to break the terms of the GPL.

You can't sign away right you don't own

[Harodotus]

IANAL, but it seems pretty clear to me that you can only sign contracts that limit your own rights.

When you wrote derivative works from a GPL source, you did not gain ownership of the original code or even full patent rights to the code you wrote. The GPL remains in effect. If they argue that your contract gives them ownership, then that contract is illegal and invalid because the original authors (IBM's Developer Works & ActiveState and probably many others) were not party to the contract.

I cannot sign a valid contract, assigning ownership of assets I do not own. I mean I can sign one, but it has no legal standing. The contract and any patents derived from it, would simply be invalidated in the first court to see it.

Re:Turnabout

[Rei]

First off, IANAL.

The basic issue is that Daimaou doesn't have the *right* to sign over the code that he modified. When he modified code that was released under the GPL, he was bound by their license agreements. If he signed an agreement to turn over all past IP of his (I'm not sure of the legality of such an agreement), he either broke the law in signing the agreement or he did not turn over the IP; he has no right to void a license established by IBM.

The logic being used by his company is almost amusing. If they got an employee who had formerly worked at Microsoft on Windows, would they expect to be able to patent parts of Windows? Of course not - because when the person worked at Microsoft, their legal obligation was to turn over any IP that they develop to IBM. They had no right to the IP that they wrote. Neither does Daimaou have any right to code that he wrote that fell under the obligations of another party's license.

What his company is doing seems to be pretty darn clear cut to me. But, as mentioned, IANAL.

They own the code you write? Fine

[poot_rootbeer]

(IANAL and am not sure why anybody would come to Slashdot seeking legal advice instead of talking to an attorney, but here we go...)

The flip side of your employer taking all the credit for the code you write on their behalf is that they also have to assume all the legal liability for the code you write. It's them that will be in violation of the GPL, not you.

What are the whistleblower statutes like in your region? I can tell that the idea that your employer is violating the terms of the GPL bothers you, but siccing the EFF on them might or might not be a good idea unless you want to lose your job in retribution.

If your works are derived...

[FooAtWFU]

If your works are derived from other open-source GPL'ed projects, the most you can do is to effectively provide the company you work for with a license to use your contributions and modifications to that code however they so please. However, if this is a derivative work which they intend to distribute, then it must still be licensed under the GPL unless the original authors and contributors authorize you to use it in a non-GPL manner. All of them.

Assuming that to be the case, advise your company that it is not within your power to release them from these restrictions of the GPL, and instruct them to contact IBM+etc for any permission they seek in that regard.

I missed half the article because there was an Ad

[OrangeTide]

Stupid ad in the middle of the article.

Basically I retract my entire post because it turns out Daimaou wrote the code before he was employed there. If the company gave a verbal agreement that won't really stand up well (you should have gotten a written agreement).

The company can still legally patent the things you implemented though. You will just no longer be allowed to distribute the GPL'd code. And your company will have to write some code from scratch to make use of their patent.

In California those "we own everything we see" contracts are non-enforcable, because of the right to work laws in the state. See a lawyer and try to research your own state's laws to see where you stand legally.

The company can't really touch code that you don't hold the copyright to though. So that is of course wrong. But they can still patent the changes and block you from distributing them. (using the GPL against you)

Re:Turnabout

[richie2000]

Specifics aside, and negligible fallacies in the analogy aside, this is really a very simple question.

I have never seen a copyright infringing downloader re-sell the latest Britney album as his own creation. When you can show me that happening, maybe your simple question can get the answer it deserves.

IP rights are not black or white. Just as with most things there is a large gray zone and there is a huge difference between on the one hand leeching a song that you would probably not otherwise buy and on the other hand re-sell someone else's software as your own.

You can not equate theft with jaywalking or involuntary manslaughter with genocide even though they are all crimes.

IP Laws in California

[OldProgrammerDude]

Back in the 80's California passed laws that state that a company cannot own your ideas (before or after employment). In fact, you can compete with your company on your own time and computers. What state is this happening. I don't know if you can sign that away with an IP agreement in this state.INAL but it looks shaky.

Don't Blame the Employer For This One

[jezor]

Daimou has put his employer in a very difficult position here, by bringing into a commercial workplace GPL'ed code, and incorporating it into his work. With Daimou being an employee, his employer had the right to assume that it could use his work product in any way it saw fit with full ownership, absent a written agreement to the contrary (employee work within the scope of employment is considered a work made for hire under U.S. Copyright law). Further, from this article, it isn't clear that Daimou either notified, explained to or got the agreement of his employer to include GPL'ed code (which does, by the terms of the license, need to stay under the GPL) in his work. At some level, the GPL issue is a red herring (although it obviously affects the ability of the employer to keep the source code proprietary)--if Daimou had included code he'd written for some other previous employer, it would have caused similar problems.

At this point, Daimou's employer may (depending on the intricacies and particular facts of this situation, for which it would need the advice of its own lawyer) face a difficult decision: release under the GPL, or rebuild using non-GPL'ed code. Who pays for the rebuilding, and Daimou's role in the process (or at the company), are other questions to be determined. Moral of the story, folks: Never include any code or content subject to outside license restrictions (whether GPL or otherwise) in something done for your boss without getting the boss' informed consent! {Professor Jonathan Ezor, Director, Touro Law Center Institute for Business, Law and Technology}

Re:Don't Blame the Employer For This One

[iplayfast]

I agree that Daimou has put his employer in a difficult position, however, they have also benefited from it. As you say they would have to re-write the GPL'd code in order to by-pass the GPL. They would have had to write it in the first place as well, so really they are no further behind.

However if they instead just use the GPL'd code and have that particular product as an open source, they might start seeing some unexpected benifits. (3rd party compatibility (IBM) springs to mind).

The real sticking point seems to be that the employer either:
1. didn't understand what Daimou was bringing in.
2. didn't understand the ramifications of the GPL.
3. decided that the GPL didn't matter.
4. decided that since they owned anything Daimou thinks of, or has ever thought of (!) they must also own anything he has come in contact with "if it enters the building". From the story.

Daimou is painting the picture as #4. But as we all know there are 3 sides to every story. (his/theirs/truth).

Re:Don't Blame the Employer For This One

[javaxman]

Moral of the story, folks: Never include any code or content subject to outside license restrictions (whether GPL or otherwise) in something done for your boss without getting the boss' informed consent! {Professor Jonathan Ezor, Director, Touro Law Center Institute for Business, Law and Technology}

Extremely relevant point here, folks. Did Daimou include the license agreement with the derivitive work? If not, it's largely his screw-up here, although that doesn't allow anyone to violate the original license agreement ( GPL or otherwise ).

Does his employer really want to risk taking on IBM and the FSF ? Might they want someone to go back and re-write the code Daimou is concerned about cleanroom-style instead, and smack him and his manager upside the head for creating this problem in a product they obviously want to market without using the GPL ?

Did Daimou for some reason think his work would be used only in a GPL-friendly manner? Did he communicate that to other parties involved?

Not quite

[WindBourne]

If I read this correctly, this is code that he wrote PRIOR to joining the company. When he joined the company, he distributed it to them and then would be required to offer it up as GPL themselves by accepting it. IOW, they are under the contract of GPL as well. But the contract came along and basically states that we do not care what you had before, all your base belong to us. That is not going to fly in the courts.

Re:Not quite

[shotfeel]

The GPL is not some kind of "super contract" that overrides everything else. In fact, it's barely been proven in court up to this point.

It has to override, otherwise copyright is useless. If all I have to do to get unrestricted rights to all the GPL software (or any software for that matter) is to hire someone to "accidently" bring it into the company then copyright is useless. Its the guys contract with the company that can't override the license he has with the writers of the GPL'd software.

And actually, according to Eben Moglen (FSF lawyer) the GPL stands up very well in court. So well in fact, that its all over before "infringers" even get in the front door to try to "break" it.

In this instance, the only possible license the company this guy works for has for the original GPL code is the GPL. The guy can't give the company something he doesn't own. So either they use it under the conditions of the GPL or they have no license, in which case they can't use it at all.

They may be able to get damages from the guy who brought the code into the company, but that doesn't give them the rights to the "stolen" code. Only the GPL can give them any copy rights.

Re:Not quite

[HiThere]

Well...
If he wrote if from scratch before joining the company, then he has the right to sell it to them under a different license (say BSD).

It doesn't sound like this is the situation, in which case they would need to go to the authors of the code that was copied, and also get a license from them.

OTOH, appearantly he did "work for hire" modifications to his code after he went to work for them, and they want to get patents on that. This is proably ok, given the USPTO, no matter WHAT he wrote. But they can't distribute the code that is under the GPL under any other license without getting permission from ALL of the authors.

I wouldn't want to be in his shoes. It sounds like he's going to have a lot of trouble getting a reference, and is going to need one. How much is his fault I couldn't guess, but the situation is quite unfortunate.

License != Ownership

[ReverendLoki]

As I interpret it, IF the agreement between Daimaou and his employer are valid, then his employer can become the OWNER of all the GPL'ed code that he wrote, but the new employer must also respect the GPL. Just because ownership changed doesn't mean the license did.

I'd address this as two issues - one a matter of pure code ownership, the other as a potential GPL violation. As far as ownership goes, you did sign an agreement, but if you can enforce the verbal agreement you made upon entry into the company, you may be able to retain ownership, though probably not without some hassle. Aside from the ownership issue, though, it sounds like the company is attempting to violate the GPL, and you should really consider reporting it as such.

Don't use GPL code

[KalvinB]

You should have talked to your bosses and other employees BEFORE you went ahead and used GPL'd code for company work. At the time, how did you justify what you were doing? You should have known at the time it would be a problem. The only person responsible for this violation is you.

If the company is worried about being sued then they should fire you and get rid of your project and hire someone else who's not incompetent to do the work. Or, maybe you'll get lucky and they'll be able to comply without any issues. Chances are that IBM/ActiveState will allow the code to be licensed to the company for a fee so they don't have to release their own code. ID Software does this. You can have the code under GPL for free or pay a large sum so you can keep your code closed.

What you should have done is first looked to see if comparable product existed that had a more agreeable license such as the BSD license, and if not, you should have reinvented the wheel.

You could still reinvent the wheel or find a comparable product and replace IBM and ActiveState's code. And that's probably what you'll have to do to keep your job.

There's no harm no foul in using GPL code as a crutch to develop with. You then just have to get rid of any GPL code entirely before you release the product.

Somehow I doubt that.

[WindBourne]

They gave a verbal ok that the code would remain his. That means they were aware to some degree that the code did not belong to them. I would also think that MS's FUD for the last 6 years should be more than enough to let everybody know about GPL code.

Re:Turnabout

[malfunct]

Unfortunately I think that Daimaou is in a bit of a pickle here and in all reality the situation is of his own doing. He signed a contract that transferred rights to a company on software that he was not legally allowed to transfer rights on. This is especially bad if he did not disclose this fact at the time of hiring. I am fairly certain that this company cannot obtain rights to the software in question because of the GPL (or at least they must abide by the GPL even if they do get rights) but I am also fairly certain that the company may have legal recourse against Daimaou because of it.

Also, just because everyone has to say it, IANAL but I do have a bit of training on what my companies policy is on hiring people with past work and what obligations each party has.

Original Creator: Louis Cyphre

[Saeed al-Sahaf]

When I started working for my employer several years ago I signed an IP agreement that states anything I think while working for them is theirs, as well as anything I've ever thought in the past if it enters their building; dumb, but I needed a job.

It wasn't as if I was drunk and unaware of my actions, but the gentleman in a dark coat, by the name of Louis Cyphre, offered me a very sweet deal.. "Alas... how terrible is wisdom when it brings no profit to the wise," he said to me, as he cracked open an egg.

Wrong, wrong and wrong.

[mwa]

Like I said, If Daimaou wrote the code prior to the IP agreement than the code isn't his to release to the company. The GPL license holders own it.

I see you've bought the "GPL is viral" FUD. Daimaou's code is Daimaou's code. It may be non-functional without the surrounding GPL code, but it's his none the less.

If Daimaou wrote the code after signing the IP agreement than he couldn't release code to GPL as he isn't the owner. The company owns that portion of the code; therefore Daimaou released the code illegally. Daimaou could potentially be held liable for any damages the company could prove due to the IP release. Furthermore, the code he introduced would have to be removed and possibly recoded. However, if the company wants to use any portion of the GPL code then said company is in violation of the original GPL'ed code.

Daimaou didn't release the code at all, let alone illegally. As long as modifications stay within the "legal entity" they are not being redistributed according to the GPL, so the company is free to use the software all it wants. The GPL explicitly states "Activities other than copying, distribution and modification are not covered by this License; they are outside its scope. The act of running the Program is not restricted..." (emphasis mine). They can even make modifications and use the modifications internally. They only have to GPL the modifications if they make them available to others, along with the original GPL code.

The company can patent the new technology and can also decide to release the entire packaged software to GPL - these are the only two legal scenarios that can exist without rewriting the GPL code.

The company can patent technology used in the code, but in order to distribute it under the GPL it must be made available, at least for GPL purposes, under a royalty free, fully re-distributable license which (mostly) defeats the purpose of patenting it.

Re:Wrong, wrong and wrong.

[mmurphy000]

Daimaou didn't release the code at all, let alone illegally.

IANAL, but by my reading of the OP, he did release the code. Here's the time sequence that I see:

1. IBM wrote their code and released it under the GPL; ActiveState wrote their code and released it under the GPL.
2. The legal entity named "Daimaou" wrote code that links to or otherwise reuses the GPLd code (" I brought in some source code that I had worked on prior to working here"), putting the collective work under the terms of the GPL
3. The legal entity named "Daimaou" distributed said code to the the legal entity that is Daimou's current employer
4. The legal entity that is the employer may have made modifications to said code that's not completely clear. If so, Daimaou is the employee who made those modifications, but he did so acting as an agent of the employer.

I think the rest of your point is valid, but I'm pretty sure there was a distribution involved, early on. Moreover, it's unclear whether the employer actually owns the ideas behind the patent (i.e., how much of this was Daimaou before he started working there?), let alone the software.

amend your contract when you sign it

[BACbKA]

Every time I had signed a contract when getting aboard as a software engineer to a company, whether startup or a big one, I added 3 provisions into my contract:

1) In my spare time I am allowed to provide support/consulting to whoever had employed me in the past. [this generally makes very good impression as it says that you carry responsibility towards your past employers -- if you switch jobs again, they'll be able to hire you to help w/o legal issues in the way]
2) My own projects (list follows) are specifically exempted; I'm not supposed to work on them in work time
3) I am allowed participation in things like USENET groups/online technical forums, mailing lists etc., as part of my work. In the scope of that, it's OK for me to render somebody else assistance via the public media, send in patches etc. Same about contributed to free software projects, whenever I deem that a free software project is usable in my work, and want to do smth to improve its suitability (obviously, if my boss tells me not to do it in work time, I am not doing that).

All the above things are then excluded from the NDA and the IP claims by the company.

Intriguing.

[jd]

IANAL, so what follows is pure speculation on my part.

The original IP agreement doesn't stipulate any copying restrictions, only that bringing code in creates a fork which they own. As such, I don't think it could be a GPL violation to bring GPL software into such an agreement, as the company has freedom to interpret the agreement such as to not violate the GPL.

As far as I can see, the company has chosen, willfully, not to. They were told GPLed code was going to be brought in, they gave the OK, they then chose to apply an interpretation of their IP rules that violated the GPL.

Because the violation was clearly willful, because they had freedom within their own rules to not violate the GPL but still apply the rules fairly and equitably, it seems clear that the entirity of the violation is on their part.

the GPL doesn't distinguish accidental violations from willful ones, but I'm assuming here that nobody wants to be unreasonable about this. Accidental violations can be cleared up and resolved, without legal disputes. It is only when the violator chooses to be antagonistic that action really needs to be taken.

In this case, antagnonism seems clear. The company likely doesn't see a legal threat, as the GPL is "just hobbyists, right?" It seems a classic case of "might makes right". What they don't seem to understand is that might does NOT make right, and that even if it did, they've trodden on the toes of some very big, nasty giants.

This situation reminds me a lot of Tom and Jerry cartoons, where Jerry whistles for the bulldog. I'll let you guess who is playing which part.

Just tell your company about SCO v. IBM...

[rewt66]

... and point out that your company is actually shipping code copyrighted by IBM, and not shipping it under the terms of the license that would give them the right to ship it.

Use SCO v. IBM to point out to your managers what it's like to be going against IBM in a courtroom when both the law and the facts are on IBM's side. Point out that IBM's IP lawyers are called the Nazgul for a reason. Point out that, once they have become aware of the issue, it becomes willful infringement.

First tell them in person. If they don't listen, then E-mail them a memo about it. This does two things. It helps cover your backside ("I tried to fix things, but my managers wouldn't listen!") and it creates a document trail for discovery when the lawsuit happens (this point will probably not escape your managers).

Does that mean that SCO is right?

[schon]

It still would be "derived from the Program or any part thereof". So, that doesn't work.

Isn't that what SCO is claiming against IBM? That because AIX was a derivative work of SysV, that it will always be a derivative work of SysV, even if there's no longer any SysV code in it?

And IBM is saying that no, that's not the case. It's only a derivative work if it's paired with the original code.

Personally, I believe IBM's lawyers over SCO's.

If you're in California...

[readams]

California labor code limits what rights an employer can claim in confidentiality and non-complete agreements. See below:

CALIFORNIA CODES
LABOR CODE
SECTION 2870-2872

2870. (a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either:

1. Relate at the time of conception or reduction to practice of the invention to the employer's business, or actual or demonstrably anticipated research or development of the employer; or

2. Result from any work performed by the employee for the employer.

(b) To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is against the public policy of this state and is unenforceable.

2871. No employer shall require a provision made void and unenforceable by Section 2870 as a condition of employment or continued employment. Nothing in this article shall be construed to forbid or restrict the right of an employer to provide in contracts of employment for disclosure, provided that any such disclosures be received in confidence, of all of the employee's inventions made solely or jointly with others during the term of his or her employment, a review process by the employer to determine such issues as may arise, and for full title to certain patents and inventions to be in the United States, as required by contracts between the employer and the United States or any of its agencies.

2872. If an employment agreement entered into after January 1, 1980, contains a provision requiring the employee to assign or offer to assign any of his or her rights in any invention to his or her employer, the employer must also, at the time the agreement is made provide a written notification to the employee that the agreement does not apply to an invention which qualifies fully under the provisions of Section 2870. In any suit or action arising thereunder, the burden of proof shall be on the employee claiming the benefits of its provisions.

You have no case, right or wrong

[Kagato]

Having gone through this situation with a major bank just a couple months ago I can tell you exactly what my lawyer told me. It won't matter if they can't win the case. The documents you signed are actionable in court. Meaning, it's not likely that it would get through out right away.

The cost to defend or persue an IP case is in the tens of thousands of dollars. If fact, if your idea or software is worth enough money, THEY WILL PUT THE MONEY INTO TAKING THE IDEA.

Now, in my case, I got the bank to make some changes to the agreement. You'll find, if you're not affraid to ask, you can actually make some changes.

As for this poor guy. First, you have to decide if you want to work their still. Then, retain a lawyer. Find out if whistle blower status applies to you, and what the ramifacations are for breaking your NDA. If it's all clear, then you should inform the USTPO about the previous art/stolen derivative. Then you should let the interested parties in the GPL and/or IBM know their work has basically been stolen. A minor GPL violation with a software package isn't likely to get much from IBM. But putting a patent on their code.... That's a whole different game.

Good luck.

Re:let's try this again...

[the arbiter]

Nice that you ignore this, a legitimate counter-argument: "I have never seen a copyright infringing downloader re-sell the latest Britney album as his own creation."

But cite this: "there is a huge difference between for-profit, commercial violations of copyright and personal filesharing."

Which leads me to one inescapable conclusion, based on this post and many others I've seen from you...you're a troll. A well spoken one, but a troll nonetheless.

Copyright transfer must be in writing!

[Crispy Critters]

Code written before the job was owned by whatsisname. The copyright to this code can only be transferred by a written document. (SCO v. Novell, folks.) The company needs to find a document that specifically says that Daimaou is transferring copyright of that code to them. It sounds like the agreement could create an obligation to transfer rights to the code, but the agreement does not itself make the transfer. So Daimaou owns the copyrights to his old code.

It is debatable what rights he gave to his company by bringing the code "in the door", but automatic transfer of copyrights is not one of them. Though establishing his ownership could be hard if he doesn't have a very good record of what he produced before being hired.

Code written for work after the start of the job probably never belonged to him in the first place, so there is no issue of transfer.

sorry, but YOU messed up

[Khashishi]

When you signed that contract that said anything you worked on is theirs, that means that you cannot bring GPLed sources in and use them in your work. The company you work for is in the understanding that the work you do is transferrable to them. Obviously, their rights over your work cannot supersede the GPL since you don't have the right to submit GPLed property as your own work. You messed up.

Past works and GPL

[nurb432]

Admittedly I'm not a lawyer but I really don't see a 'past works' clause being legally enforceable. ( I don't think that 'unrelated ideas' are captureable either. but that might be a 'transferable right'

Aside from that, the 'past work' has shared ownership by others since you incorporated GPL code, so you cant transfer ownership to your company even if it was legal to grab your past works from you.

Re:Is this guy in trouble then?

[CdBee]

No, in order to save space the shrink-fit plastic sheet is transported inside a quantum singularity which is extruded to order by a massively-parallel badger array

Smart guy...

[Anonymous Brave Guy]

I make it a point to discuss IP agreements up front.

Good move. I, too, asked specifically to see this aspect of the contract before I started with my current employer (then a small local business, privately owned). They had a clause which specifically distinguished between company and non-company works, basically saying it was theirs if I did it on company time or with company resources, which is pretty much fair enough IMHO.

More interestingly, when a US megacorp recently acquired that formerly small, privately-owned company, they tried to change our contract and insert various "all your soul are belong to us" clauses in the IP section. I publicly challenged the guy from the new company who was basically taking over at the top of the management chain about the IP, and his attitude was something pretty pathetic about how they train and develop us so of course they deserve to own everything we ever make. After that meeting, something like half the guys I work with sent me messages saying they agreed with my point and they hoped I'd fight for it. I did, and the new company wound up taking out the entire page of IP crap in the new contract and replacing it en masse with the old wording from our previous contract.

It gets better. Having demonstrated the kind of legal bull they were prepared to try, the entire employee base of the old company then scrutinised every word of the new contract, took legal advice, etc. with a depth and precision we probably never would have thought necessary otherwise. I think two people in the whole company were actually prepared to sign the contract as first presented. By the time we'd finished telling them what they were going to change (or many of us were going to walk, effectively wiping out the millions of dollars of investment they'd just made to buy the company) the contract looked rather different, and didn't contain anything that extended beyond company work into our private lives whatsoever.

It can be done. You just have to be smart about how you do it, and polite but firm when you're dealing with the lawyers/HR people. Ultimately any smart company is going to prefer a reasonable change to the contract over losing good staff, and let's face it, you didn't really want to work for a stupid company anyway, did you?

Your company may *NOT* re-define US law.

[coats]

IANAL, but: According to US law (17 USC 101; see http://www.law.cornell.edu/uscode/search/display.h tml?terms=work%20for%20hire&url=/uscode/html/uscod e17/usc_sec_17_00000101----000-.html

A "work made for hire" is--

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a "supplementary work" is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an "instructional text" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

If your work was not in the course of your normal duties, and if it was not *specifically* commissioned by your employer, then as I read it, Federal law says the work is yours, unless you executed a proper transfer of ownership.

Then, (17 USC 204, q.v.http://www.law.cornell.edu/uscode/html/uscode1 7/usc_sec_17_00000204----000-.html

A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.

says that the transfer must have been specific to the item in question, and in writing.

I think you should hit them up for extortion... and maybe hit *them* for copyright violation if they try to hang onto the stuff.

Note that the copyright transfier stuff has come up in SCO vs.Novell, recently -- see GrokLaw.

Re:Turnabout

[Ender Ryan]

Short answer: Fuck you.

Longer answer: People who respect the GPL generally also respect the rights of others with regards to copyright, but not when they try to make their rights trump all others.

kill them

[Ender Ryan]

Please kill the people you work for to rid us of their presence. That's my suggestion.

Ok, more seriously... Report the GPL abuse to www.gpl-violations.org. Get a new job. Be sure to let your current employer know what assholes they are.

The answer's there in the GPL, #7

[hubertf]

7. If, as a consequence of a court judgment or allegation of patent infringement or for any other reason (not limited to patent issues), conditions are imposed on you (whether by court order, agreement or otherwise) that contradict the conditions of this License, they do not excuse you from the conditions of this License. If you cannot distribute so as to satisfy simultaneously your obligations under this License and any other pertinent obligations, then as a consequence you may not distribute the Program at all.

Dale Carnegie

[ImaLamer]

One the best ways to get someone to do something is to convince them it is in their best interest.

Tell the offending company that they should contact their lawyers because it is them who will end up paying in the end, not you...

Re:Turnabout

[Sique]

First of all: He can and never will legally sign over IP that doesn't belong to him. And as far as he tells us he never claimed to own the IP rights to the code he made modifications for. So he had not commited culpa in contrahendo, I guess. Whatever contract he signed, it doesn't pull the rights out of the rightful owner, the one who wrote the original code, because the company never signed a contract with the original IP holder.

So all the company can try to claim rights to are the modifications he made. So if he creates a diff output from the original code compared with his own code there may be a chance that the company receives rights to the diff files. It still doesn't help the company very much because of the GPL license, which forbids the distribution of derivative works under other licenses than the GPL. And the diff file might be called a derivative work. The complete code (diff and original merged together) surely is.

In the end the company sits on a bunch of diff files, which can not be distributed to the world other than by GPL. It might be perfectly legal to use the files internally, as long as no derivative work of the original code leaves the company. The problem is one for the lawyers of the company and of the FSF. Not one for the guy actually writing the code. He has signed all his work to the company, and his work happens to be a derivative one. Tough luck for the company, but not a fault of the guy himself.

Re:Turnabout

[Tim C]

In the end the company sits on a bunch of diff files, which can not be distributed to the world other than by GPL.

You're forgetting that the guy owns the IP of the modifications he made. As copyright holder on them, he's free to licence them to his company under whatever terms they agree to between themselves. That code will most likely be completely useless without the rest of the code which he *cannot* licence to the company, but that's life.

It might be perfectly legal to use the files internally,

The GPL places no restriction on use. The company can use any GPLed software internally without restriction, including this software. If they redistribute it, they then must supply with it either the source, or an offer to make the source available to whoever requests it.

I am unsure of the situation with regards to employees of the company that receive the software from another empoyee. The GPL specifies that no restrictions can be placed on those who receive the software; I suspect that they may be legally entitled to give it to whoever they want to. I suspect that the company may likewise be legally entitled to fire them, though.

Re:Turnabout

[DavidTC]

Well, maybe if you can find them, you can ask them personally, instead of just randomly trolling.

Employer might have rights to SOME of the code

[elzbal]

There seems to be a lot of confusion over the legal status of GPL'd code. Here is the proper answer:

Any code you write is owned (copyrighted) by you. You have the right to release it under the GPL, or any other license, or any combination thereof. (QT and MySQL, for example, are both released under both GPL and proprietary licenses.)

Any code you did not write, but rather received from a GPL'd product, is not owned (copyrighted) by you. It is the owner of the original author (unless there was a legal transfer of copyright), and you only have permission to use it under the terms of the GPL (unless an additional license was offered).

Because of the contract you signed, YOUR code can be used by your employer in any way they see fit. This includes bundling it with commercial non-GPL'd products. However, your employer does NOT have any rights to use the borrowed code. If your employer wants to use that in any way, they will need permission of the original authors or to release the finished product under the terms of the GPL.

In other words, you need to identify for your employer which code is legally theirs and which is not. Their legal team should understand that, very simply, you (and therefore they) are not copyright owners of every line of code. They will need to recreate - from scratch - those portions for which you/they are not copyright owners.

Regarding the patent, if they are trying to patent a portion of the borrowed code (not your code), then there is obviously prior art, and you should inform them as such.

At least four legal issues here.

[abb3w]

Zeroth: I am not a lawyer. You need to be talking to one. Before close of business tomorrow.

First off, there's the issue of your ownership of your original code. Given your description of your IP contract and with only an oral agreement to say that the code was to remain yours, you're pretty well screwed unless the responsible manager admits to that. Talk to a lawyer to make sure, and learn from this to get such agreements that modify written contracts in writing.

Second, there's the issue of the company being able to patent it. If you did not publish the patentable parts before coming to work at the company (weakening any patentability claim), this would appear to be legal and unstoppable, again barring an honest manager or you recieving divine intervention in the form of Perry Mason. Same as above.

Third, there's the question of copyright of the code you've written itself. Again: neither written agreement nor honest manager = bend over; all the source is belong to them.

Fourth, and much less straightforwardly, there's the question of the LICENSE for the code you've written. I'll assume the lawyer you visited merely laughed at you during the initial consultation, and you got screwed in the above three legal issues. Here's where things get less pleasant for the company.

The code you started with was licensed under the GPL. As such, they can choose to distribute it under the GPL, provided they make a GPL-use-is-free exception with regard to their brand new patent. (Their attorney may have to work on the fine print, there, given the nature of the GPL). Call this scenario "4-A".

Alternatively, for a "4-B" scenario, they may do a clean-room rebuild to remove any GPL code-- although they could retain any code you had written and that they thus now own. They'll need someone to comprehensively spec out what you've written, someone (and you'd be the most convenient choice) to separate the raw code lines of what you've written from the GPL parts, and a sacrificial virgin coder (IE, one who's never seen the original) to redevelop the code from the specs and the trimmings that you wrote. There might also need to be a reviewer for the spec (ideally two, a lawyer and a code expert to agree that it's legally sufficiently vague to not infringe, and sufficiently clear to produce the desired product); it might also possible for you to serve on the spec review team.

For a "4-C" scenario, they can simply put their code and their patent on the shelf, and wait for someone to try doing something similar, and use their happy patent to sue them.

And of course there's the "4-D" scenario, where they do a non-legal release without the GPL or a clean-room rebuild.

As I noted, you need a lawyer, ideally with expertise in both contract law and IP. With his contract expertise, he might be able to convincingly threaten a case over the manager's breach of promise. With his IP expertise, he also can politely enlighten them as to the immensely sharp teeth involved in the GPL, to deter them from a "4-F" scenario. (Let him decide the most diplomatic way of explaining that since you already feel screwed over, you would be disposed to help make sure that they felt the GPL's teeth.) He could then enquire as to whether they thought the product valuable enough to justify the time and expense of reverse engineering. If it's a Google-killer search app, they may think it is; but from what you've said, probably not, ruling out a 4-B scenario. This leaves 4-A and 4-C.

The only disincentive for 4-C I can think of is the ill-will doing such will provide. There's plenty that can spread easily enough. You might be able to make it much harder for them to get new hires by telling this happy anecdote about them at your Alma Mater. You can also spread word about how they're changing from a software developer to a litigation company. However, a lawyer is in the best position to judge the impacts of any other agreements on what you'll be able to tell, and to decide the most effective to

Re:At least four legal issues here.

[Todd Knarr]

Note that there's a caveat on the first issue if the author lives/works in California. A chunk of the California Labor Code (sections 2870-2872) spell out the limits of what of an employee's IP a company can claim ownership of in an IP agreement (basically anything done while actually on company time, or that relates directly to what you're paid to do while you're actually employed by them). Any attempt to exceed those limits is illegal and to the extent an agreement purports to exceed those limits it's null and void.

Any California employer is supposed to include a copy of those sections along with any IP agreement. I make a point, when I sign such an agreement, of adding language to the effect of "subject to California Labor Code sections 2870-2872" above my signature if it's not already there.

That's not "redistribution"

[mwa]

From the FSF's GPL FAQ:

Is making and using multiple copies within one organization or company "distribution"?

The manger is the employer's agent.

[abb3w]

Moral of the story, folks: Never include any code or content subject to outside license restrictions (whether GPL or otherwise) in something done for your boss without getting the boss' informed consent!

Daimou has indicated that the manager led him to understand the code would remain his, providing such consent, so do emphasize: "...in WRITING."

Not a GPL-specific issue

[Sloppy]

...anything I think while working for them is theirs, as well as anything I've ever thought in the past if it enters their building; dumb, but I needed a job." To make a long story short: Daimaou wrote some code derived from...

This isn't about the GPL. This is a copyright issue. Once copyright issue is resolved, then you can think about licensing issues. You have the same problem whether the original code is proprietary, GPL, or even BSD (although with BSD, the distinction between owning something and merely being licensed to use it, is pretty damn subtle ;-).

Someone else holds the copyright to the original code. There are only two ways your company will ever be able to "own" the full work (or obtain a license other than GPL) instead of just your patches:

1. contact the original copyright holder and make a deal
2. reverse-engineer and replace the original code

They claim that because of my IP agreement, they have full rights to this source code.

You didn't have the power to sign over the copyright to another party's (e.g. IBM's or ActiveState's) code. You only gave them the code that you wrote.

The company is either committing copyright infringement, or if they have accepted the GPL, then they are violating the terms of the license. Since their OK to proceed with the project was verbal, there's no proof of a contract, so they'll get to pick which thing they are guilty of.

Look, licensing is easy

[david.given]

It works like this:

• If you wrote it, you own it. (If you're working for hire, they own it.)
• If you own it, you can do whatever the hell you like with it.
• You may not distribute someone else's code, under any circumstances, unless they say you can.

The GPL says: I, the author of this code, allow you to make unchanged copies of the code at will. I also allow you to make changed copies, provided your changes (which you own) are also GPLd.

So, since:

• The original software is owned by a bunch of people, and is GPLd.
• The changes he wrote, while at the company, are owned by the company, and proprietry.

Therefore:

• The modified version may not be distributed at all.

The company has two options: they can either license their changes under the GPL, or they can distribute the original, unmodified program and a bunch of diffs. (Or not distribute it at all.) Claiming that the now own the original code is compeletely nonsensical.

As for the patent issue, I'd say that it's a dead duck because prior art obviously exists, but I don't know much about patents.

Amicus brief or equivalent possible?

[ediron2]

A question for patent attorneys (since IANAL): is there a way to write a challenge to such a filing, akin to an amicus brief or a deposition, stating a position or evidence against a given claim, to get it into the official record in case this is ever abused? Seems like that'd be a simple enough thing...

Re:Good thing BSD is not dying

[Principal Skinner]

This statement (when the "this is exactly why" part is included) is very illogical. The OP's company evidently has no respect for the GPL and is happy to attempt to copyright/patent anything that comes through its doors. If this were your company's policy, they would have no need for another policy forbidding the use of GPL code, since they would believe their contracts with their employees supersede any license obligations.

However, based on your company's policy, they evidently understand the GPL, and mandate only BSD because they prefer to be able to copyright or patent all their code. So you'll never have one of your coworkers complaining on /. that your company is trying to take possession of GPL'ed code.

Unconscionable ?

[Anonymous Coward]

In most countries a court can declare a contract, or parts of a conctract, void if it is found to be unconscionable. I'm not sure if that's the case where you live, but if it is this might be an alternate approach.

IANAL and the specific criteria can vary but it seems to me that this passage clearly disadvantages you and you were desperate to get a job. There might be other factors as well: Are you rather young/ inexperienced with work contracts? Is the company big? Were you told to seek or offered independent legal advice before signing the contract? ...

See you local lawyer to find out more ... :-)

Re:Turnabout

[cyberformer]

That's debatable. (In fact, it's so uncertain that lawyers do debate it in front of judges and juries). When the GPL was written, it explicitly said that you didn't need to accept it in order to use software. Stallman's philosophy was that you don't need a license to read a book or listen to music, so you shouldn't need it to run a program. Copyright law covers copying, not use.

Unfortunately, lawyers for companies like Microsoft diagreed with the FSF, and EULAs have become common. Even without UCITA, the software companies have been quite succesful in court, leading a lot of Free software to treat the GPL as a EULA and ask people to click through it during installation. (This is mostly because of the "no warranty" clause.) The next version of the GPL might officially be a EULA, because (like the Afero license) it wants to ensure that code is available to every client who accesses a Web server.

Re:Turnabout

[Tim C]

Here we get to one of the most overlooked points in the GPL: All rights derived from the GPL are bound to the fact that the entity in question accepts the GPL in complete.

Yes, but the GPL specifically and explicitly does not grant the right to use the code.

From the GPL itself:

"Activities other than copying, distribution and modification are not covered by this License; they are outside its scope. The act of running the Program is not restricted" (see http://www.gnu.org/copyleft/gpl.html#SEC3)

From the FAQ:

"You are free to make modifications and use them privately, without ever releasing them. This applies to organizations (including companies), too; an organization can make a modified version and use it internally without ever releasing it outside the organization." (see http://www.gnu.org/licenses/gpl-faq.html#GPLRequir eSourcePostedPublic)

This guy's company is free to use his code internally without restriction. What they are *not* free to do, and what they're trying to do, is distribute it and keep the source closed. It's perfectly permissable, however, for a company to take a GPLed project, modify it, use it internally and never release the modifications. However, as I said, I don't think that they could legally prevent an employee from distributing it to the outside world (but of course, IANAL, and if I did such a thing I'd expect to be fired for gross misconduct or similar)

Re:are you stupid?

[sum.zero]

they are not equally wrong. that is exactly why there are distinctions in law.

money is THE issue when calculating the degree of infringement. that is the way the law is constructed. non-monetary infringement wasn't even prosecutable until the net act in 1997, iirc.

you argue points i don't make and ignore those that clearly don't side with your opinion. believing harder will not mot make your reality any more true.

there is an established history of people sharing the music that they love. this should be protected under free use [and was until the *aa orgs started rewriting the rulebooks]. i would argue that the mechanism/medium should not matter and that digital sharing today should be just as acceptable as sharing mixed tapes was back in the pre-burner days.

sum.zero

Re:are you stupid?

[kz45]

there is an established history of people sharing the music that they love

In the 1800s, there was an established history of physicians prescribing cocaine to heal most ailments. This is no longer legal. Laws change.

non-monetary infringement wasn't even prosecutable until the net act in 1997

Before 1997, most people barely knew what the Internet was, let alone how to obtain "free" music or software. Also, high-speed bandwidth was pretty much non-existant. I think the main reason people weren't prosecuted was because it happened at such a small scale, most artists/companies didn't even notice their work being shared.

what about taking GPLd code and putting it in software that I don't make money on (it's used in-house by my company) but not re-releasing the source-code...is this any more or less wrong than if I were to make money on it?

an IP license should be followed whether it's the GPL or something the RIAA has created.

if you don't want to follow someone else's license, either:

1) don't bitch when your license doesn't get followed or
2) don't use the program or song under a license you do not agree with.