Clash of the GPL and Other IP Agreements? 530
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."
GPL holders own the code (Score:3, Interesting)
IBM? (Score:4, Interesting)
Original Creator (Score:5, Interesting)
Well... (Score:3, Interesting)
Comment removed (Score:3, Interesting)
Re:Get a lawyer (Score:2, Interesting)
I missed half the article because there was an Ad (Score:3, Interesting)
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)
IP Laws in California (Score:2, Interesting)
Fake story, slashdot fooled again (Score:1, Interesting)
This is your fault and you have civil liability (Score:1, Interesting)
If you did not list that work you did on a pre-existing IP registration form when you joined the company you no longer have rights to it. Those verbal assurances you received from your verbal IP declaration only count if you can prove they happened.
Furthermore, from what you say you've done, you have failed to notify your company of the legal encumberances on the work you brought in so their violation of the GPL is your fault. You violated the GPL by trying to pass the sw off to your company as if it was your sw, so although they are infringing it is an unknowing infringement.
Furthermore, you accepted compensation (your salary) in exchange for the GPL'd sw that you presented to your company so, legally, your company could sue you for having defrauded them (as part of that they could attempt to recover the patent-filing costs they've already incurred).
You seriously need to discuss what you've done with a lawyer (either one of your own or one supplied by your company) to find out how to undo or at least minimize the damage your fraudulent actions have caused.
Re:The company's copyrights (Score:2, Interesting)
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.
THINK: -- employment contracts = boxing -- PLAN (Score:1, Interesting)
They think of this as like boxing or wrestling -- attack and see how the opponent responds.
Without a lawyer on your side, you take one hit and fall right over. They look at you, think, "this one doesn't play the game" and you're dead meat legally.
With a lawyer on your side, your lawyer sends back a redraft of the employment agreement that's as aggressively in favor of YOU as the first draft was in favor of the EMPLOYER.
Their lawyer looks at it, says "okay, this is a fair fight" and they come to reasonable terms.
If you do NOT have a lawyer check an employment agreement, you are DEAD DEAD DEAD because you will have agreed to something so egregiously one-sided that the lawyers just laugh and shake their heads in amazement that anyone would be so stupid as to sign the first draft boilerplate.
It's how they separate the sheep from the people.
I see this all the time. People in computing are incredibly naive about how the IP game is played, and are routinely giving away far more than anyone with any knowledge of how it works legally.
No one will respect you if you simply fall over at the first poke, when you should be giving as good as you're getting in these terms.
Having a lawyer check your employment agreement terms is as basic as doing your backups. You WILL lose if you don't do it.
And I can't tell you where I work or how I know all this. Trust me, ask someone with some mileage in the business, go to your college dean if nobody else knows you.
You don't get taught this because the system thrives on those who don't know enough before stepping into it to reserver for themselves the rights to their own prior work and ideas.
It's a simple, standard line any good lawyer can insert into any employment agreement and _the_employers'_lawyers_recognize_routinely_as_sh
Re:Please name the employer... (Score:4, Interesting)
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:GPL holders own the code (Score:5, Interesting)
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:Don't Blame the Employer For This One (Score:3, Interesting)
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?
Past works and GPL (Score:3, Interesting)
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:Please name the employer... (Score:3, Interesting)
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
Smart guy... (Score:3, Interesting)
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?
At least four legal issues here. (Score:3, Interesting)
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
Amicus brief or equivalent possible? (Score:3, Interesting)
Unconscionable ? (Score:2, Interesting)
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 (Score:3, Interesting)
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 [networkmagazine.com], because (like the Afero license) it wants to ensure that code is available to every client who accesses a Web server.
Re:are you stupid? (Score:2, Interesting)
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.