Can Employer Usurp Copyright On GPL-Derived Work? 504
An anonymous reader writes "I am a recent graduate, and I've been working on my own on a project that uses GPL-licensed libraries. Later a university department hired me, on a part-time basis, to develop this project into a solution that they needed. The project's size increased over time and soliciting help from the open source community seemed like the obvious thing to do. However, when I suggested this, my boss was not interested, and it was made clear to me that the department's position was that copyright of the whole thing belonged to them. Indeed, by default work created for an employer belongs to the employer, so I may have gotten myself in the same trap discussed here years ago. Even though I want to release my code to the public I don't know whether I have the legal right to do so. I did start the project on my own. And, since no written or verbal agreement was ever made to transfer copyright over to my employer, I question whether they can claim that they now own the extended version of the project. Also, the whole project relies on GPL libraries, and without those libraries it would be useless. Can they still claim copyright and prevent me from publishing the source code even though it is derived from GPL software?" Some early commenters on the submission pointed out that it matters whether the libraries were licensed under the LGPL vs. the GPL.
Re:GPL Violation? (Score:3, Interesting)
If my understanding is correct (not guaranteed by any means), they would only be in violation if they released the binaries. Any work done before he worked for them is his copyright and he could release that but any work done after his hire is theirs and as long as they keep it in house, there is no violation.
IANAL (Score:3, Interesting)
IANAL. If you care about this, get one.
Is the project really worth the trouble? Both you and the department failed to take the proper steps when you were hired. If you push the issue, they may fire you. You'd likely be blackballed from ever working for the university again. If the matter goes to court, you might scare off future employers down the line. Companies get very scared at the idea of someone introducing GPL poisoned (their frame of mind, not mine) code into their products without disclosing it.
Unless this is some amazingly cool and important project, it might be worth just taking it as a lesson learned. Don't ever use code that requires a license in your employers' software without documentation (and for something like this, keep an extra copy at home), especially if it's something you wrote. Cover Your Ass (CYA).
Down the line after you leave the university's employment you might go back to your code prior to be hired and release that but it still might be pushing it. You might be legally right but that doesn't mean that you can afford a Pyrrhic victory.
Did you begin the project as a student (prior to being paid), particularly in any way related to a class? If so, some universities attempt to apply IP ownership to students' work.
From my understanding of the GPL, you were fine creating software that relied on GPLed libraries and not GPLing it, provided you didn't release it. The place where it kicks in is when you distribute (say, to the university). At that point, you were obligated to put your code under the GPL. Did you do so and if so, was it formal?
Assuming that there's no student clause, you own the copyright on everything you wrote prior to them hiring you. They most likely own everything after that. For you to have legally distributed the initial code to them, it would have to have been GPLed. If it wasn't formally GPLed, they could try to put you on the hook for using unlicensed software in what you wrote for them.
They could GPL their portion of it and everything would be solved. Or they could eliminate all of the original code and still use the GPL library and be legal so long as they don't distribute it.
Re:GPL Violation? (Score:3, Interesting)
Honest question: does distribution internal to an organization count as distribution as described by the GPL? That is, if I have code subject to the GPL, and I distribute it to my employees without allowing them access to the source code, am I violating the GPL?
This question may be easily answered by another read-through of the GPL, but I'm too tired to do that myself right now...
First / correct answer: ask your lawyer. This is a question for lawyers
second, more general useful and helpful but speculative answer. You probably don't mean "distribute it to my employees" you mean "install it on my computers which my employees use". In which case it's not a violation of the GPL. This is because it doesn't count as distribution because it is on your own computer and so you (the company) still really posses it. Full details of this may well vary from one state/country to another.
Re:Yes, but it may not mean what you think it mean (Score:5, Interesting)
Is it possible to do two distinct forks simultaneously, if you're the one doing the coding on both forks? Couldn't your employer argue that your contributions to the personal fork are inevitably derived from the code you wrote for their fork? And if you write your fork first, and then soon thereafter write the employer's fork, isn't the employer's fork inevitably derived from your personal fork, since you wrote both?
I think a single person simultaneously (or even with weeks) writing both forks is a bad idea, at least from a legal "who owns this code" standpoint.
Re:Ask a lawyer (Score:5, Interesting)
Actually, what matters is whether or not he distributed the software, preferably under a GPL license, before he was employed. If not, then there's simply no record that he ever did any work before he went to work for them. Whereas if he had distributed it them he could go to that other person and get a copy of the software from them.
Re:GPL Violation? (Score:1, Interesting)
That's mostly irrelevant. We can safely assume that his employer got the source code from him, so there is no GPL violation even if it applies.
The trouble he got himself into is this: He (probably) still owns his own work prior to the employment. His employer likely owns the copyright to the work he did during his employment (depends on the contract). If he can't convince his employer to open-source the project, then his only option for continuing is to backtrack to the state the project was in before he started working for them. But then he'll have a hard time making any improvements from there, because he knows the source he wrote for the employer. He will knowingly or unknowingly create a derivative work.
If you want to continue working on a project after employment which involves writing code for the same project, then you should write that into the contract: Either the code is open-sourced or you get to keep the copyright and license it non-exclusively to the employer. If you can get neither, then the project is no longer yours.
Re:It was GPL before, so is GPL now (Score:3, Interesting)
No, Alice owns nothing in your scenario, and has no standing to sue.
True, but the Alice/Bob/Claire situation doesn't match the summary:
"I am a recent graduate, and I've been working on my own on a project that uses GPL-licensed libraries. Later a university department hired me, (...)
Unless the hiring agreement contained an explicit copyright assignment, anything he contributed before he got hired will give him standing to sue if they violate the GPL.
what's yours is yours. (Score:5, Interesting)
consult a lawyer, but IMO the key thing you said is:
"I did start the project on my own. And, since no written or verbal agreement was ever made to transfer copyright over to my employer, I question whether they can claim that they now own the extended version of the project."
it was yours to start with. they paid you to do some extra work on it. there was no transfer of license.
they may "own" any of the work-for-hire stuff you did while employed by them (depends on the nature of the employment - usually, in simple terms, if you're a contractor, you own your work but if you're an employee, they do) BUT THEY DO NOT OWN THE COPYRIGHT, AND THEY DO NOT OWN YOUR PRIOR WORK.
BTW verbal agreements are worth the paper they're written on - doesn't matter what they claim you said, if they can't produce a signed transfer agreement, it means nothing. same as if an employer verbally agrees that you will get paid quadruple for working overtime, unless that's standard practice where you work it's unenforcable unless it's in writing. and same as if the salesman says you can opt out of the contract at any time for any reason without penalty - if it's not what the contract says, it means nothing.
never trust a verbal agreement. they're worthless. this is true anywhere, not just in employment.
BTW, crap like this is why i *NEVER* sign an employment agreement without carefully looking at the clauses to do with ownership of work. if it says anything other than "what i do during work time on work equipment is yours, what i do on my time on my own equipment is mine" i send it back for another edit. i've had one or two bosses quibble about that until I ask them if they want to start paying me for 24 hours a day rather than 7.25.
(that question was always a good answer to the occasional managerial whinges about long hair and beard too)
Re:Read your contract first! (Score:3, Interesting)
You might be able to claim that your implicit permission was based on the equally implicit assumption that the rest of the code would become part of the same (open source?) code base.
Oooh, that could be a sweet end-run.
Re:what's yours is yours. (Score:5, Interesting)
never trust a verbal agreement. they're worthless. this is true anywhere, not just in employment.
Unless you're getting married, which - at least in Australia if not other jurisdictions - is legally defined as a verbal agreement.
teach them a lesson (Score:3, Interesting)
So, as I understand it, there are 3 pieces of software here. First are the GPL libraries; let's call them 'A'. Then, you have the software you did as a hobbyist, let's call that 'B'. Finally, you have the work for hire, called 'C'. C depends on B, and B depends on A.
It's clear that they own C, and there's nothing you can do about that. On the other hand, you own B. If you publicly distributed B under the GPL, you are probably screwed here. In that case, there's nothing to distinguish B from A, and your only recourse might be some technicality in the GPL. For example, if you used the GPL v3, you may be able to use the stuff about software patents to prevent your university from using it.
However, if by releasing B under the GPL you mean you just used GPL software and considered it free, you may be able to turn around and teach them a lesson here: assert ownership over B, and demand that they produce written proof otherwise. You could demand that C be open-sourced in return for being allowed to use B.
That being said, though, you were stupid to do closed-source work on your own open-source project. Not only will you have to fight for access to your own work, your knowledge of the closed-source work will probably 'taint' any contributions to the open-source one to such a degree that they could probably claim work you do on it, even if it's off their payroll.
In the future, don't be so trusting of your employer. When I do open-source work for hire, I create a private github account and make the repo publicly available and GPL-licensed from day one. All of my work on the clock is then contributing to an externally owned and operated repo.
Oh, and I get the corporate overlord's approval of open-sourcing the thing in writing.
Re:Yes, but it may not mean what you think it mean (Score:1, Interesting)
First of all, I don't think judges and courts like tricks. They can just say they don't buy it. (Though I've never actually known a judge.)
I would also think that by working for an employer, you granted them the copyright and/or license to use that work, previous licenses notwithstanding. I don't know that the employee can distribute the work either, as the new and improved version isn't the same work as the original, and to my way of thinking, the employer owns the copyright to the new version and has a royalty-free license to use the old version. I don't think a court would buy the argument about simultaneous forks.
Re:GPL Violation? (Score:3, Interesting)
I agree with #1, and sort of don't also. The university should have taken a look at the license on his software before committing time and resources to improving it. If it was GPL'd before employment(and had copyright notices intact), the Uni can't distribute derivatives without also licensing them under the GPL.
I don't think there is a judge alive who would honor any submarine copyright-transfer terms of an employment contract, so unless he transferred them to the University with an intent to do so, he still owns the original works up to that first day of employment. The university cannot simply usurp his copyrights on the original works by employing him.
Your rant is apt for a lot of cases, but this particular issue is something a lot of /.'ers really understand. Most lawyers, if you ask them about GPL and copyrights, their eyes will glaze over. This guy really needs to decide how important this is to his job.
If push comes to shove, his job will be over but he can prevent the school from distributing his derivative works under other-than-GPL terms.
There are 2 levels of copyright I believe (Score:3, Interesting)
Level 2) Any changes you created to the project while under the employ of your employer. These belong to him/her/it. You cannot distribute them without permission. If your employer does distribute the code, because of the GPLed libraries and stuff, the employer must provide source code. But if your employer does not distribute the code, then he/she/it is free to keep it a secret and not release it. These are the rights under the GPL, it mostly protects the rights of an entity that the software is distributed to. But without distribution it doesn't apply.
I'm definitely not a lawyer. But it seems to me your best options are the following:
1) negotiate to buy a license to the software. If you get your employee to distribute it to you somehow, then you can demand the source and you are free to do what you want with it (via the terms of the GPL the employer cannot revoke your right to modify the code if you have the program distributed to you).
2) if your employer ever creates a commercial product from your code, buy it and then demand the source code and you are free to do what you want. If your employer ever makes a commercial product cheaply, buy a copy and then demand the source code, under the terms of the GPL
Re:Yes, but it may not mean what you think it mean (Score:3, Interesting)
No. You read GPL 2 2(b) incorrectly.
If you provide binaries and source, then you are correct.
But, if you provide binaries and an offer of source that offer is transferable. Then, anyone who gets binaries from anyone else can demand source from you.