We are using some of my pre-existing, personally copyrighted open source software libraries at my employer. Recently they have asked me to "fix" the copyright so that it is theirs.

I have no objection to them owning a version of the code, i.e. that they own the copyright to, however, I want to retain the ownership and copyright of the original code as it existed before I came here.

Is there a reasonably painless way to achieve this?

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    Hi there! This is more on the legal side of things, so it's a candidate to migrate to Law, but I do have a question for you. Is there a reason why your employer wants the copyright of those libraries? Because the way I see it, they should be able to do whatever they need with a permissive open source license. – Zizouz212 Nov 20 '17 at 20:33
  • There is a (somewhat amorphous) concern about an employee owning code that's used internally. And thanks for the pointer to the Law forum. – Scott Swank Nov 20 '17 at 21:02
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    My best recommendation would be that the code is released under a permissive license, and then a local copy of that codebase is then maintained within the company. Or, the company actively contributes to the open source version of your libraries (or to their own), releasing distributions and improvements and such. But yeah, it's a bit of a fuzzy situation here. – Zizouz212 Nov 20 '17 at 23:14
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    What is your employer trying to gain/protect by having them transfer your copyright to them? Do they wish to sue people who are using the software out of compliance with the software's license? Are they trying to protect themselves from you suing them if you decide to leave the company? What is the license of your pre-existing work? – airfishey Nov 21 '17 at 15:56

Firstly, IANAL/IANYL. That said, you have in the past written some software which you have taken into and used at your current job. Your employer has paid you to make certain changes to it for them, and they now wish to own the copyright to the resulting program. You wish to retain it, and are curious how to address the problem.

There is the copyright in the original program, and there is the copyright in any changes made since you brought the code into your place of work. The current program is therefore something with two copyright interests in it. Any given copyright can be owned by only one entity, so abandon any idea that you can both own either of them.

You own the copyright in the program you wrote before you started work for your current employer, assuming (if you were at that time in work for someone else) that you did it in your spare time and that your then-contract of employment didn't have one of those nasty we-own-everything-you-do-while-in-our-employ clauses. Depending on the law in your jurisdiction, it is likely that the copyright in the changes made by you in the course of your current job are owned by your employer, as a work-for-hire. So the program as-is is fairly heavily entangled.

You could leave your current job and redo the work you did to bring the program to its current state, but that would be a long way from a cleanroom reimplementation of the program, and your employer could at a later time bring an action asserting that your new changes violated their copyright on your old changes. Essentially, neither of you owns anything useful on its own: you own an old work that you can't bring up-to-date without putting yourself in jeopardy, and they own a shiny new set of changes that only make sense when applied to something they don't own. No wonder they want to sort this out.

The best outcome I can see for you is that everyone keeps what they have now, but you agree to license the original program to them under the terms of the GNU GPL, in exchange for them giving you a copy of the current program under those same terms. They are then free to use the program as they wish within the enterprise without needing to own the copyright; this is well-understood. Any copies they transmit outside the enterprise, including the one they give to you, must be licensed under the GPL. You'll have an unencumbered copy that you can copy / develop / reuse as you would wish, as long as it stays under GPL. You won't be able to relicense the work, but you don't have the right to do that now (see above) so no loss there.

Next-best outcome is that you agree to transfer copyright in the old work to them, in exchange for a copy of the current work under the terms of GNU GPL. That leaves you the same as in the previous example, but they now have the right to relicense the work (though not the copy you have, which is irrevocably under GPL).

I can't see many cheery outcomes apart from those two.

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    Well done on stating the dual copyright interests. Original copyright to the author, and the copyright on the modifications belong to the company. The OP never stated the license, so the last few paragraphs seem like speculation to me. If there was no explicit license declaration, then it would be all right reserved for the original author. Obviously, things get a little muddied when the original author allowed his company to use it for internal use. – airfishey Nov 21 '17 at 15:48
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    @airfishey thanks for that. My understanding is that the author never addressed this issue with his company at all, which is why they want to sort it out now. The last two main paras are my suggestions for dealing with the situation; I'm not sure how that makes them "speculation". – MadHatter Nov 21 '17 at 16:19
  • Thank you. The license is GPL 2, but I stated that I'm happy to re-licence or cross-licence it under another licence such as Apache. – Scott Swank Nov 21 '17 at 16:37
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    @ScottSwank As the sole copyright owner you can sell a copy of the source under non-open license conditions. I don't know that you could sell copyright without also relinquishing the copyright of the existing project. Compare to mysql which was released under gpl and also available to purchase under a closed source commercial license. Just check that the conditions of sale doesn't include giving full ownership with you deleting your existing project. – sambler Nov 22 '17 at 12:55

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