Balancing Third Party "Ownership" Against The GPL?

hooptie asks: "For the past three years, I've been employed by a contract agency to develop medical outcomes measurement software for a military medical center. Since neither of my immediate corporate nor military superiors really understand the GPL, they've all agreed to license the software under it; and from day-one, everything developed has been released under the GPL, with my name as the holder of the copyright. Now, this 'home grown' system is actually being looked at by the MEDCOM commanders to be deployed Army wide; and, there are some people in the chain of command, under the auspices that the Department of Defense owns the software and that THEY didn't agree to the licensing, don't want to adhere to it because they want to incorporate it's functionality into a closed, propietary system that they've been developing. If I've followed the appropriate steps for applying the GPL to the software, do I have any recourse if they try to close the source? Is this situation parallel to the ASPL or am I missing something?"

Why ask /. and not FSF?

Why don't you ask the FSF since they wrote the license, about advice? WHy ask /. where the answer might or might not mean anything, and the value of the answer is questionable at best.

IANAL, but...

It seems to me that:

1. Although you are named the copyright holder, you developed it while working for your employer, so they have ultimate rights to it.

2. The GPL doesn't prevent the copyright holder from changing the license on later versions of the software, only against anyone else taking the source and releasing it under anything besides the GPL. Therefore, as long as they don't try to put the cat back in the bag and "un-GPL" all the old versions (how they would, I don't know), all the versions from now on could be released under any license they feel like.

doesn't matter...

The important issue here is the terms of the contract. Unless it was explicitly stated in the terms of that contract that the code will remain open, (which, I assure you, it doesn't) then the DoD can do whatever they wish.

It doesn't matter what kind of liscense the code has already been released under. It really doesn't matter what you want. The DoD owns the code, because they paid you to develop it. If they want to incorporate it into a closed system, then they have the power to do so. If you raise a ruckus and attempt to stand in the way of that, you'll find yourself replaced, quickly.

J.J.

Strike a compromise

Since owners of GPL'd sofware can release the same software under multiple licenses (as did Larry Wall with Perl), ask to keep ownership, but re-license it to the DoD under a BSD'ish license (or whatever else they want).

That way, it stays GPL for everyone else, but they get to incorporate it into their propietory program and everyone's happy.

May Not be a big deal

If the DOD wants to keep the source closed, the can still comply with the GPL. All they have to do is make the source available to the people who use the system, namely other Military people. That may be enough to make them happy.

Of course I doubt you'd be happy as the whole point of leting the code out under the GPL was to help more than just the Military right?

BTW I think you may have just shot yourself in the foot by
A) not getting things in writing
B) admiting in public that they did not understand the GPL. If they did not understand it, it makes it hard to say they argreeded. (IANAL)

-Peace
Dave

What a mess.

First, I have to say that it seems rather unethical to have done this. Your employer didn't understand the GPL but you snuck it by anyway? Explaining it would have been the right thing to do, rather than giving free software a bad rap by having them discover the terms after the fact. If you were employed by them, you may even have had a legal obligation to make a good-faith effort before taking the code for yourself.

I also question if you legally own it. They paid for your emplyment, and I'd be really surprised if they let you hold the copyright. But if you do, there's no issue. Take your code and do what you want with it, but be prepared to go to court and be blacklisted from future employment with them.

Finally, nothing prevents the true copyright holder (whoever that is) from releasing the code under another license. Nothing says you can't can't push GPL licensed code out the public door, while also putting the code into a closed system. Of course, you can't take other's GPL'd code (including their additions to your code) and put it in the closed system.

Get a lawyer if you're really serious about this. You're not going to sort this out on /.

Who owns the code?

If your companies contract specified that your company would retain ownership of the code, then you can release it under any license you like, as long as you let them use it.

If the contract says the military owns exclusive rights to the code, and the people there who agreed to use the GPL were authorized to do so, then it is TS for them: they got their contract cheaper than if someone wrote the code from scratch, but they have to pay for it in terms of licensing.

If nobody authorized to make that kind of decision was consulted, then you are at fault, and the govt. is probably obligated to abide by the GPL (since the existing code you used was only licensed under it), but you are screwed.

If you were the exclusive copyright owner, you could potentially release the software publically under the GPL while giving the military a non-exclusive license to use the software in their system.

Really, your initial proposal should have stated that you planned to use existing software licensed under the GPL, and the final product would have to be distributed in compliance with that license, along with including a copy of it with your proposal.

Additional thoughts

I would recommend that, if you have been given permission to release something as Open Source, you get it in writing. Then I would suggest releasing early and often, so that if the copyright holder (the entity that commissioned the "work for hire") changes his mind, it's too late, it's already being dessimated across the 'Net. It appears that this guy made two mistakes: a) he did not get the GPL agreement in writing, and b) he did not release the software early and often under the GPL in order to "get the genie out of the bottle" (so to speak).

Nevertheless, the copyright holder (the entity that commissioned the "work for hire") can change the licensing at any time and use the software in any way he wishes. If he wants to use the software in a proprietary application with a proprietary license, that is his right, regardless of any other license that the software has been released under. If the software has not yet been released and the copyright holder wishes to change the license prior to release, that is his right. So it is pretty clear that this dude is out of luck -- he didn't properly practice CYA (rule #1 of CYA: Unless it's in writing, it ain't so. Rule #2: If they want to come after you, make sure it'll be as publically embarrassing for them as possible).

-E

Re:Why ask /. and not FSF?

Why don't you ask the FSF since they wrote the license...?

The license is irrelevant here; the question is what sort of agreement the employee in this case had with his/her employer. If they had a written agreement saying, for example, that the employee could keep copyright to the code if it was made available to the employer under the GPL, then that's OK. If not, then by default copyright law assigns ownership to the employer (the code in this case is called "work for hire").

The admission that immediate supervisors didn't really understand the GPL, and the fact that higher supervisors didn't seem aware of the situation, suggests to me that there was no formal agreement, in which case I think s/he's probably screwed.... If the code clearly stated the employee's copyright claim since day 1 and supervisors have seen it and not objected, maybe that would be sufficient evidence of a contract. I don't know (and IANAL). But it would really have been smart to get a formal written agreement at the start.

In any case, this situation has *nothing* to do with the terms of the GPL in particular, and would be exactly the same if the APSL or any other license had been involved.

--Bruce Fields

Here's how this really works...

There is nothing wrong with them taking it and using it in a closed-source situation, since they did indeed fund it's development. I suggest you create a sourceforge project for it - so free developement can continue even after they start using it commercially. What this does is creates a 'fork' between their commercial and the GPL version.

Now, the above may not work if the development has been assisted by outside parties. See the thing is, if someone else has contributed to a GPL project, they own the rights to their contributions. So if the Gov't wants to take it from GPL to a proprietary license, they will have to remove any other contributions. Or else they will need to get the other contributors to sign over their rights to the code they wrote.

--
Twivel

FOIA?

It sounds like the initial consent was invalid and the GPL is not binding on the code you released.

However, I must admit that my eyebrows went up with the stated intention to incorporate this code into a proprietary system. I know that the government often pays for initial development and turns the results over to a company for deployment, but those companies are usually involved from the start.

More generally, software (and all IP) developed with public money generally belongs to the public. It isn't always released, esp. if it involves national security, but it doesn't sound like that would apply in this case.

Perhaps it's time to investigate a FOIA (Freedom of Information Act) filling. Not because you could use the code obtained by it, but to establish that the code *is* the legal property of the US Government, not a company. A FOIA would also uncover if the software was developed by public funds and improperly given, exclusively, to a private concern. This should give you enough information to take it to your congressman - and local investigative reporters - for further action.

(Finally, for the anal among us IANAL. Get over it - no sane person gets their legal advice from slashdot. Our function is to raise issues that can be pursued further with local counsel.)

How about being nice...

You did work under contract, an appeared to do something not in their interest... i.e. maintain copyright and release under the GPL. Well, give them an unlimited license. I mean, by all rights they should own copyright, so give them what they need.

Additionally, the legal issues here are silly. This is the military, they have lots of guns, therefore, they make the rules.

Regardless, nobody here thinks that this was ethical of you. If you used GPL code (and can justify the GPL for that reason), then inform them of this and what that means. As they are unlikely to distribute, they won't care. If the code is being turned over to a company to make a program to distribute to the military, inform them of the situation. They can keep the system under the GPL by including a source code CD to the military and contract them into including a copy if they distribute it.

Contrary to /. wisdom, the GPL does not require a company to put there software for download, in CVS, etc. They only need to make source available to a third party if they don't include it originally.

I mean, the GPL doesn't limit companies doing a custom job... it only limits companies trying to do a "mass market" job... which makes sense, the Free world Stallman refers to was a world of custom code, and with custom code, there is no reason not to make source available (that way you don't need to be the only one that can make changes, you can ethically turn down the project). Generic mass-market applications (Office suites, GUI OSes, etc) have an incentive to keep proprietary, because you can charge per copy.

While there are other "clients" that code for the DoD can be sold to, charges like treason come to mind. :)

Re:Clear case.

It's not clear. Copyright law has a big "gotcha" when contractors are involved. Without more info, I don't think the answer is clear.

The US Supreme Court gave a unanimous ruling interpreting "work for hire" in the case
COMMUNITY FOR CREATIVE NON-VIOLENCE v. REID, 490 U.S. 730 (1989) [findlaw.com]

The case discusses how to tell an employee from an independent contractor, and what standard to apply in each case to identify a work for hire. For an indendent contractor, the work for hire condition exists only "if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." It also is only allowed for an enumerated class of works that doesn't appear to include computer programs.

In this case, Reid was a sculptor who made an oral agreement with CCNV to create a sculture for them. He did and they both tried to claim copyright on it. He was ruled an independent contractor and the contract did not create a work for hire because it was oral and because a sculpture isn't in the eligible class of works.

For this poster, it depends on what kind of employee he is. If he is an independent contractor, then he likely owns the copyright even without the agreement. If he is an employee, then he only owns the copyright if the agreement was in a written contract.

It sounds like things are even more complicated because he works for a contract agency. This presents a third possiblity. If he is an "employee" of the contracting firm, but there is no explicit written contract transfer of copyright from the contracting firm to the client as part of their contract, then the contracting firm would own the copyright.

However, a copyright licence like the GPL can be created much more easily than a transfer of copyright ownership. If the company agreed at any time to licence their copyright under the GPL, then that's probably definitive. The copyright owner can relicence the works they own, but they cannot revoke a licence already given, unless the licence specifically says so (and the GPL doesn't).

Government vs. contractor ownership of copyright.

This sounds like Guido and Python. He never got the licensing straight with management at CNRI and when they finally took an interest, they wanted to change the license.

The U.S. Government can not own a copyright. However, a contractor working for the government can own a copyright on work done for the government. The last Army (ARPA) contract I worked on, the contract let the researchers choose the copyright as long as they gave one copy to the Army, delivered to Fort Huachuka, so you may be in better shape than you think. You'd better look at the contract.

There are a few courses you can take here:

• Dual Licensing: let the Government do what it wants with its copy, and let the copy you have distributed so far continue under the GPL.
• Pull Back the GPL Copies: legally a mess, so much of a mess that the government most likely will not want to do it once they realize what a mess it is.
• Write Your Congressman: this is publicly funded unclassified research, we should have a copy available to the public. Organize a campaign for people to write their congress person about that.

I have a conspiracy theory for you: Why is this happening so soon after Microsoft announced it wanted to lobby Government not to have public funding of GPL work?

Thanks

Bruce

Re:FOIA?

"More generally, software (and all IP) developed with public money generally belongs to the public."

No, it doesn't. As a former contractor employee, I was frustrated many times in my attempts to get ahold of publicly-funded software. In fact, a very large percentage of publicly-funded software ends up being proprietary, since the government agrees to those conditions to get some special consideration.

Don't confuse government use with public use--while the government can (and usually does) require unlimited government use of software developed with government funds, this right does NOT automatically translate to the public at large.

Likely course of action

Disclaimer: I manage several US Military contracts that deal with code development.
As it seems like you are under contract (opposed to an actual General Schedule Govt Employee), I'll frame this comment accordingly. If not, or you'd like more info, please drop me a line at the above address.
Anything you develop under contract is owned by the government unless specifically noted otherwise in your contract. After all, it's government money that pays for the work, and they retain the right to do whatever they want with the code (or "deliverables" in contracting terms). Now, if you obtained written approval to release the code under the GPL from the COR (contracting officer's representative - whomever manages your contract matters on the govt side), there is nothing you can do.
To be honest, it would be in your best (legal) interest to take down any postings of the software immediately until the whole matter is ironed out. (Just to make sure you can't get nailed for further distribution after you were aware there was a problem.)
On a different note, as mentioned in other posts, sneaking the GPL past people who don't understand what it entails was a pretty shady move. I fully believe in the GPL and free software (I develop some myself), but you should take careful steps to prevent something like this in the future. Also, don't think that all government/military types are clueless idiots who are so entrenched in buracracy (sp?) that they can't tell which way is up. We do exist, and we are trying to educate the masses!!
If you read this, please let me know how things turn out - I'd be interested to know.

Re:What a mess.

• First, I have to say that it seems rather unethical to have done this. Your employer didn't understand the GPL but you snuck it by anyway? Explaining it would have been the right thing to do, rather than giving free software a bad rap by having them discover the terms after the fact. If you were employed by them, you may even have had a legal obligation to make a good-faith effort before taking the code for yourself.

How do you know that the person writing this question didn't make a good-faith effort? All he said was that they didn't understand.

IANAL, but I would think that all that would be required for a good-faith effort is drawing their attention to the fact that it is being licensed under GPL and pointing them to a copy of the GPL for review.

• I also question if you legally own it.

I agree with this. The software and all IP arising out of it is almost certainly subject to the contract that your firm has with the DoD. It may be something of a grey area, because the US Government is not allowed to hold copyrights, if I'm not mistaken, but the contract may require that the copyright be held by an entity that licenses the software to the US Government for the use they require.

This being the case, you probably will not be allowed to retain copyright and license it under the GPL if this conflicts with the purposes under which the Government wants to use it.

---

Re:similar problem, solved?

Even simpler solution: Since the U.S. government belongs to U.S. citizens, and I'm one of those citizens, tell your boss that I personally order the release of all software developed with my tax money under the GPL.

If either the contractor that is paying you or anyone in the MEDCOM chain of command doesn't like this, tell them I must ask for their resignations, effective immediately, along with return of any of my money they have spent on proprietary software.

Robin Miller
Elkridge, MD
-------
US citizen,
voter, and
taxpayer.