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Clash of the GPL and Other IP Agreements? 530

Posted by Cliff
from the grabby-aren't-they dept.
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."
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Clash of the GPL and Other IP Agreements?

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  • by slashnutt (807047) on Wednesday March 16, 2005 @02:18PM (#11955527) Journal
    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.
    • by slashnutt (807047) on Wednesday March 16, 2005 @02:23PM (#11955614) Journal
      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.
      • 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, b
      • by ReverendLoki (663861) on Wednesday March 16, 2005 @02:47PM (#11955955)
        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.

      • by mwa (26272) on Wednesday March 16, 2005 @02:57PM (#11956088)
        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.

    • 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 se
  • hmm (Score:5, Informative)

    by Triumph The Insult C (586706) on Wednesday March 16, 2005 @02:18PM (#11955528) Homepage Journal
    anonymously tip off http://www.gpl-violations.org/ [gpl-violations.org]?
    • Re:hmm (Score:3, Funny)

      by ZephyrXero (750822)
      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.
  • by hedronist (233240) * on Wednesday March 16, 2005 @02:18PM (#11955530)
    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.
    • by tigre (178245) on Wednesday March 16, 2005 @02:21PM (#11955589)
      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.
    • 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
      • 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.
      • "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, ex
        • 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

    • by MrLint (519792) on Wednesday March 16, 2005 @02:28PM (#11955690) Journal
      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.
    • by corporatemutantninja (533295) on Wednesday March 16, 2005 @02:33PM (#11955784)
      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.

    • by Rakshasa Taisab (244699) on Wednesday March 16, 2005 @02:34PM (#11955791) Homepage
      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.
    • 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.
      • Not quite (Score:4, Informative)

        by WindBourne (631190) on Wednesday March 16, 2005 @02:45PM (#11955927) Journal
        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.
    • 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 th
    • 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
  • IBM? (Score:4, Interesting)

    by mindstormpt (728974) on Wednesday March 16, 2005 @02:18PM (#11955533) Homepage
    If we're talking about IBM sources, try talking to them about it, maybe they'll be interested.
  • Move (Score:2, Funny)

    by odyrithm (461343)
    "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 (Score:5, Interesting)

    by DeathFlame (839265) on Wednesday March 16, 2005 @02:19PM (#11955547)
    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.
    • A side question is whether the questioner's ageement with the company put an onus on hium to secure IP rights for any code he contributed from outside sources. If he didn't notify his employers at the time that he was supplying improved GPL code he might himself have a legal contract problem.
    • 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.

  • We Are Not Lawyers (Score:5, Insightful)

    by Anonymous Coward on Wednesday March 16, 2005 @02:19PM (#11955553)
    Even if we were, we could not give useful advice without full details.

    Talk to a lawyer.
  • Sorry but... (Score:2, Insightful)

    by 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... (Score:3, Interesting)

    by k4_pacific (736911) <k4_pacific@PASCA ... m minus language> on Wednesday March 16, 2005 @02:20PM (#11955566) Homepage Journal
    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.
  • Get new legal dept (Score:3, Interesting)

    by liquidpele (663430) on Wednesday March 16, 2005 @02:20PM (#11955570) Journal
    Sounds to me like their legal department doesn't know what they are talking about, or just trying to bleed money from the company with stupid things so they need to get a second opinion from another IP/Copyright/Patent lawyer before they get sued themselves.
  • Righting Wrongs (Score:5, Insightful)

    by Doc Ruby (173196) on Wednesday March 16, 2005 @02:21PM (#11955574) Homepage Journal
    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 (Score:3, Insightful)

      by Taladar (717494)
      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 (Score:5, Insightful)

      by CrankyFool (680025) on Wednesday March 16, 2005 @02:37PM (#11955836)
      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.
      • Dale Carnegie (Score:3, Insightful)

        by ImaLamer (260199)
        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...
  • I don' tthink it'll be a big problem. Just notify IBM of what is happening. They'll get it sorted out, either through licensing the code under different terms or making them open it up. I mean I suppose IBM might decide just to ignore it, but I don't find that highly likely given their history.
  • Get a lawyer (Score:5, Informative)

    by ari_j (90255) on Wednesday March 16, 2005 @02:21PM (#11955583)
    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.
  • by crow (16139) on Wednesday March 16, 2005 @02:23PM (#11955606) Homepage Journal
    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.
    • by wturky (7324)
      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.
  • I can see lawyers here smelling something like money in this situation. Some on one side will say it's a matter of civil rights and others will say...wait a second....this is the issue. We'll see.

    Meanwhile, I guess this poor coder/programmer will be given these words....you guessed them..."you are FIRED"!

  • The software in question is "owned" by the copyright holders (presumably ActieState and IBM). Therefore, your company's claims of ownership on the code are bogus, and any use it makes of the code must comply with the licensing terms that the code was obtained under (the GPL).

    If you didn't care about your job, you would contact the copyright holders and inform them of what's going on--it is up to them to sue your employer, if they find that your employer is in breech of the license.

    As for the patent: if it
  • by FreeLinux (555387) on Wednesday March 16, 2005 @02:23PM (#11955616)
    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.
  • The GPL doesn't give a rat's about IP agreements, and it doesn't care who the rightsholder is. When you transfer the copyright from your code to them, they become the GPL copyright holder, and are thus bound by that license for the code in question. That means the patents are likely good and the derived code must be made available with the app, though not necissarily free, and not necissarily public.

    But I am not a lawyer, this is not legal advice, and I might be wrong.
  • by shark72 (702619) on Wednesday March 16, 2005 @02:25PM (#11955629)

    "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.
  • Rooked (Score:2, Informative)

    by samael (12612)
    Your verbal agreement was worth the paper it was written on, unless you have witnesses. You are working for scumbags. Leave now, inform them that they are working with code _already owned by a company that could buy them a million times over_ and look for a job that isn't working work scumbags.
  • by (H)elix1 (231155) <slashdot.helix@nOSPaM.gmail.com> on Wednesday March 16, 2005 @02:25PM (#11955642) Homepage Journal
    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...
    • by gr8_phk (621180) on Wednesday March 16, 2005 @02:52PM (#11956034)
      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.

      • > "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
      • Smart guy... (Score:3, Interesting)

        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,

  • It seems pretty clear that the company is in the wrong and that the code does not belong to them. The solution, however, is less clear cut. I would suggest that you retain an attorney. Someone who has your interest at heart. I think that ultimately this might come down to a fight over the contract that you signed with the company signing over all the work you have, or ever will, create. Having someone in your corner might be a pretty good idea.

    I would also start looking around. Companies that force

  • by schon (31600) on Wednesday March 16, 2005 @02:26PM (#11955662)
    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.
  • by Mordac the Preventer (36096) on Wednesday March 16, 2005 @02:26PM (#11955665) Homepage
    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.

  • by Harodotus (680139) * on Wednesday March 16, 2005 @02:27PM (#11955677) Homepage

    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.

  • by poot_rootbeer (188613) on Wednesday March 16, 2005 @02:29PM (#11955712)
    (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.
  • by FooAtWFU (699187) on Wednesday March 16, 2005 @02:30PM (#11955728) Homepage
    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.

  • by jezor (51922) on Wednesday March 16, 2005 @02:39PM (#11955869) Homepage
    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 [copyright.gov] 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}
    • 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 poin
    • 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 licens

    • by abb3w (696381) on Wednesday March 16, 2005 @05:29PM (#11957988) Journal
      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."

  • Don't use GPL code (Score:3, Insightful)

    by KalvinB (205500) on Wednesday March 16, 2005 @02:49PM (#11955987) Homepage
    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.
  • by BACbKA (534028) on Wednesday March 16, 2005 @02:58PM (#11956108) Homepage Journal
    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. (Score:3, Insightful)

    by jd (1658) <imipak AT yahoo DOT com> on Wednesday March 16, 2005 @02:58PM (#11956109) Homepage Journal
    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.

  • by rewt66 (738525) on Wednesday March 16, 2005 @03:04PM (#11956205)
    ... 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).

  • by Kagato (116051) on Wednesday March 16, 2005 @03:21PM (#11956410)
    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.
  • by Crispy Critters (226798) on Wednesday March 16, 2005 @03:30PM (#11956511)
    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.

  • Past works and GPL (Score:3, Interesting)

    by nurb432 (527695) on Wednesday March 16, 2005 @03:46PM (#11956644) Homepage Journal
    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.
  • by coats (1068) on Wednesday March 16, 2005 @03:56PM (#11956791) Homepage
    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 [cornell.edu]
    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 [cornell.edu]

    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.

  • kill them (Score:3, Insightful)

    by Ender Ryan (79406) on Wednesday March 16, 2005 @04:02PM (#11956866) Journal
    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.

  • by hubertf (124995) on Wednesday March 16, 2005 @04:17PM (#11957057) Homepage Journal
    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.
  • by abb3w (696381) on Wednesday March 16, 2005 @05:14PM (#11957775) Journal

    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

    • 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 nul

  • by Sloppy (14984) * on Wednesday March 16, 2005 @05:33PM (#11958043) Homepage Journal
    ...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.

  • by david.given (6740) <dg.cowlark@com> on Wednesday March 16, 2005 @05:54PM (#11958318) Homepage Journal
    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.

  • by ediron2 (246908) * on Wednesday March 16, 2005 @06:11PM (#11958523) Journal
    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...

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