Sunday, March 16, 2008

Open Source and the IP Clause

This article reflects my lay-person's understanding of employment and intellectual property. It is not legal advice of any kind. I am not a lawyer. Don't assume that any of this is correct. This is based on drips of information I've picked up over the years. Corrections are very welcome.

As I've mentioned recently, I've switched jobs in the past month. One of the things I always worry about is the dreaded intellectual property clauses in most modern employment contracts. You may be surprised to find out that most companies in the know are willing to modify these, traditionally, draconian clauses if you phrase the request correctly.

The Problem

Commonly, these sections claim ownership of all IP, in all forms, for the company, with very little restriction. In more than one case, I've seen contracts that claim ownership of all IP developed on and off the clock, regardless of whether or not the work is related to what the business does or may do. This, of course, means that anyone interested in doing any kind of open source development, or even research of any kind, will not necessarily own such work.

I like to get involved in open source projects so having the freedom to do so is worth something to me. I found that simply being up front and asking the employer for modifications to the contract, if necessary, is the best way to go.

The Changes

In the most recent contract I was presented with, the company claimed all rights over everything developed while I was employed. Having one or two projects I'm interested in working on that are entirely unrelated to the company's stated business, I asked for changes to the contract.

I did not provide specific language for the changes I requested. I asked the company's management and general counsel for the following privileges.

  • Ownership and the right to develop source code, written work, and IP in any other form provided it did not compete with or interfere in the company's stated goals and business.
  • The right to release any IP, in any form, under a license of my choosing, citing the GPL, LGPL, BSD, APL, MPL, Creative Commons, and other licenses as examples of the type of license I may select.
  • The right to participate in standards groups and bodies, user groups, and conferences, presenting any IP that I would own, under these changes.

Some of that is redundant. I asked for these things this way because I wanted to make very clear what my intentions were; to effectively disclose to the public, any IP I developed during my employment that was unrelated to the business.

As concessions, I offered that the company would be allowed to dictate the following.

  • Whether or not I disclose for whom I work. They have the option of requiring me to state for whom I work (i.e. if they feel it helps them in some way).
  • If any IP was in a shady grey area about whether or not it was in conflict with the business's goals or primary line of business, it would remain unreleased by me.
  • I must select a license that allows the company to use said IP. Restrictions on their use of said IP was acceptable (i.e. I license something under GPL which limits their usage in some cases).
  • They may opt to review work for conflict with their business.
  • I am still (obviously) subject to, and aware of, the non-compete clauses in my contract.


It's not utopia. I don't even know if it's all enforceable; like I said, I'm really not a lawyer (and they are). I probably won't develop anything worth their time, but I want the option to try. More importantly, we, as potential contributors to open source work and standards, have the obligation of protecting projects and bodies to which we contribute. I don't know how effective the changes are that I requested, but certainly in its original form, that contract could be problematic to an open source project if I had contributed something and my employer wasn't happy about it.

I hope more companies, especially those that thrive on open source software and standards (even if only indirectly; I'm looking at you, Oracle, Java, and Microsoft shops), become more tolerant of what is required to generate such IP. Better, of course, are those that can directly contribute company owned IP, but by simply not attempting to exert ownership of the minds of their employees, a company is taking a huge step in the right direction. At least in my (non-lawyer) opinion.


Vinho said...
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E. Sammer said...

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Rusty Divine said...

I'm in a similar situation. The way management has decided to compromise is to have an exclusion list where I can ask to retain rights to something and if they agree, it goes on the list. Neither of us know what will happen if they decide to say no and I don't want to just hand my idea over completely. Would they try to develop it themselves? Would they offer to put me in charge of the project and throw some R&D money at it?