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I find myself in the following situation; I have a software project under GPL license, which is a good fit for usage in the company I am currently employed at.

Now I am happy to dual license it to them for commercial use, at no fee whatsoever. However, what I would like for that in return, is an exception to my standard contractual terms; that all code written on the clock belongs to them. I don't want to dilute or confuse my intellectual ownership to my project just because I am making a bugfix to my own project that I am giving away for free.

What would such an arrangement look like in practice? Should I set up a separate Contributor license agreement, which is explicitly referenced by the dual license? Or could the CLA be added as a section in the dual license? Would I have to revisit my employment contract to resolve the ambiguity, or can I simply explicitly override previous contractual obligations in the CLA? Any document templates to this effect would be greatly appreciated!

  • Dual licensing your project with a proprietary license is fine, lots of projects do that. The bigger issue is really changing the work for hire arrangement with your employer. – curiousdannii Sep 6 '18 at 2:46
  • Thanks for the input. When you say 'bigger issue' are you merely referring to a sparsity of established precedent, or do you think there are intrinsic complications to the arrangement? – Eelco Hoogendoorn Sep 6 '18 at 6:59
  • More complicated because it involves a different area of law. I wouldn't be surprised if it would require a change to your employment contract. – curiousdannii Sep 6 '18 at 7:02
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    The only two viable options I see are to get the company sign a CLA for your project, or to change your employment contract. I would seriously advice you to talk it over with a lawyer. – Bart van Ingen Schenau Sep 6 '18 at 16:01
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    I'd take a good look at your terms of employment. Mine don't mention "on the clock" at all: because, if you are salaried, you are generally considered to be "on the clock" 24/7. – kdopen Dec 14 '18 at 19:41
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You need a lawyer to draw up a contract specific to this situation. It is unwise to try to shoehorn some generic legal template into your circumstances, because you will almost certainly need to negotiate all of the terms of this agreement. For example, a contract would have to answer these questions (and probably many others):

  • Will you work on the GPL'd code on company time and equipment? What if the company decides your time would be better spent on some other work?
  • Who has the final say on accepting or rejecting pull requests, both from inside and from outside the company? What if you reject a coworker's pull request?
  • Can the company remove you from the project and install someone else in your place?
  • If there are trademarks, who owns them? If there are no trademarks, will you or the company apply for any?
  • Must you own the copyright yourself, or would it be enough for the company to release the code under the GPL on your behalf?
  • What will become of the project if, for whatever reason, you stop working on it?
  • Will you remain an employee, or would it be wiser to reclassify you as an independent contractor?
  • If you and the company get into a disagreement over any of this, what happens next? Do you go straight to court, or is there some kind of arbitration or mediation process instead?

Every one of these questions can have many different answers. Which answers you end up with will depend on the strength of your negotiating position, as well as the specific circumstances of your individual situation.

Note however that many larger employers already have established processes for incorporating open source projects. You should consult your manager and/or HR to see if the company already has a policy, and try to work within that framework if it exists. They will (should) have plenty of experience dealing with the above list of questions, and should have pre-written answers to most or all of them. You can then make an informed choice about whether to proceed.

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Maybe a starting point for this is to provide in your contract of employment that:

  1. bugfixes when done on your employer's clock are owned by you;
  2. but not when they part of major development to the commercial package that you're getting paid for by them to develop;
  3. you can't develop features for the GPL version of the package if they have asked you as part of your job to develop them (and you do so), for the duration of your employment + 6 months. Unless they consented otherwise, in writing.

The rest would take care of itself through general principles of employment law associated with ownership of copyright. Whatever you do at work "during the course of your employment" is owned by you.

You'd need to watch out for breaches of your fiduciary duty to the company as an employee (see number 3 above).

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