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Most people who work in software development have signed an Intellectual Property Rights Assignment notice whenever they start a new job. The purpose of these assignments is to ensure the employer obtains ownership of anything the employee creates which would either attract copyright, or be suitable for patenting.

Although they are meant to cover work done on the employer's behalf, they are nearly always written fairly broadly, effectively covering anything the employee creates during their period of employment (even when 'off duty').

The implication of this is that a contributor to your project, who submits their contributions under a CTA (Copyright Transfer Agreement) might not actually own the copyrights they are assigning to your project.

Is anyone aware of this having been tested in court, or of cases where this has caused problems?

Is it possible to craft a CTA to work around this issue?

  • I'm not aware of it being tested in court, but that's because issues like this are always settled out of court (with both parties grudgingly happy about the outcome). As long as their contributions were minor, the realistic worst case scenario is a settlement where the offending lines of code are removed from the project. If the primary developer of your project didn't own copyright to their own work then it could be a very long and difficult lawsuit and could go either way. – Abhi Beckert Sep 14 '15 at 0:44
  • I doubt this has ever been tested in court, because I doubt any company cares sufficient about your free-time open-source commitments to pursue legal action. – Martijn Sep 14 '15 at 14:21
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The reason these agreements exist is to avoid the issue outlined in the first few paragraphs of this article: that developers may well still own the rights to software they develop after employment, and could in theory sell on to rival companies.

In theory, the looseness of many of these agreements (be they CTA's or IPRAA's) means that the employer owns all software their employees create while working for them, whether in their free time or not.

However, in practice, many companies will not enforce this on software created in the developer's free time, because they want to keep the developer. Think: if your company won't let you sell this software you've got an idea for, but this other company will, would you not move to said other company and develop it while you're in their employment?

Now, IANAL, but I've heard tell this is possible: if your employer is OK with you working part-time somewhere else as well as for them (though many aren't), then you can create a skeleton company. You then develop your software as part of a project for that company, so your first employer doesn't own the rights. Your skeleton company sells the product.

The only way to craft a CTA so this is possible would be for the employer to make it less loose, and only include software developed in working hours for them.

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    Not in an open source context, but I personally know of one case where these IPRAA's cost two companies a lot (in $s and inconvenience) when an employee changed jobs and was legally 'working' for both for a week or two. And many companies would be fine with losing the developer if they held on to (and could develop) a valuable idea without them. – kdopen Jul 6 '15 at 17:45
  • Also in practice I suspect if a company tried to enforce the contract in an illogical way (eg, claiming to own copyright for some open source work you did at home in your spare time), the court would declare that section of the contract void. It could be a long/drawn out/expensive legal fight, but I'd expect common sense to prevail. – Abhi Beckert Sep 14 '15 at 0:40
  • @AbhiBeckert Expecting common sense to prevail in a US civil court is like ... well I can't think of a naive enough comparison :) – kdopen Sep 14 '15 at 3:36
  • @kdopen I don't think it's naive, especially when it comes to employees the courts (and especially jury) tend to favour them over their employer. – Abhi Beckert Sep 14 '15 at 3:45
  • @ArtOfCode another important reason for IPRAA's is the risk of a malicious employee claiming that they wrote their code or invented their patents not during work hours, and it's pretty much impossible to check that. Usually, employers don't care about the open source work, but do care about some employee at some point saying that all IP created by the employee is actually theirs and there is nothing the employer can do to prove otherwise. – Martijn Sep 15 '15 at 9:46
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You can't 'work around it.' Whether you are accepting a copyright transfer, or a license, you are trusting, in good faith, that the contributor actually has the rights claimed.

At Apache, there is a CCLA, for 'corporate contributor license agreement'. People who want to clarify the implications of their employment obligations get their employer to execute and submit one of this -- it grants the Apache license to any IP (if any) owned by the employer.

But no one is required to file it. If, some day, an employer were to show up and claim ownership of a contribution, the project would need to replace the code. And that's all they'd need to do, because they accepted the contribution in good faith.

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