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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."
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."
anonymously tip off http://www.gpl-violations.org/?
vodka, straight up, thank you!
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.
If we're talking about IBM sources, try talking to them about it, maybe they'll be interested.
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.
Even if we were, we could not give useful advice without full details.
Talk to a lawyer.
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.
--
make install -not war
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.
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.
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.
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.
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.
"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:
Sitting in my day care, the art is decopainted.
If your employer wins the dispute, they get no more right than you have to break the terms of the GPL.
SteveB.
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.
Its not users who are broken, it's systems not taking account their likely behaviour and fixing it technically.
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.
"Here's a fun fact: the moon has turned to blood!" -- Newscaster, "Jesus Christ Supercop"
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.
Money for nothing, pix for free
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}
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.
I prefer the "u" in honour as it seems to be missing these days.
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.
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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.
I prefer the "u" in honour as it seems to be missing these days.
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.
"You can now flame me, I am full of love,"
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.
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.
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.
VKh
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).
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.
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.
-1 Uncomfortable Truth
Then, (17 USC 204, q.v.http://www.law.cornell.edu/uscode/html/uscode1 7/usc_sec_17_00000204----000-.html
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.
"My opinions are my own, and I've got *lots* of them!"
Daimou has indicated that the manager led him to understand the code would remain his, providing such consent, so do emphasize: "...in WRITING."
//Information does not want to be free; it wants to breed.
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:
Therefore:
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.
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