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Suppose a developer's contract says that all intellectual property (IP) rights to her code belong to her UK employer. While employed, she develops a library and open-sources it under the Apache 2.0 licence. The employer is not initially informed, but later finds the library's public repo on GitHub.

Questions:

  • Can the employer force revocation of the licence?
  • What would then happen to those who forked and started using the library before revocation?

There are related questions on OS SE, such as https://opensource.stackexchange.com/questions/4012/are-licenses-irrevocable-by-default. But they do not seem to address the situation when a library is open-sourced in violation of an employer's IP.

schrödingcöder
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  • Comments are not for extended discussion; this conversation has been moved to chat. – feetwet Jun 13 '19 at 19:13
  • Here's why employers may want sweeping IP clauses in their contracts: http://www.brightjourney.com/q/working-company-intellectual-property-rights-stuff-spare-time. (Esp. the first answer, by the SE founder.) Although US-centric, the answer could apply to tech companies regardless of jurisdiction. – schrödingcöder Jun 15 '19 at 15:20

3 Answers3

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The Apache 2.0 license purports to be irrevocable, but it also presupposes that the supposed licensor has the right to grant permission to copy. In this case, that is untrue, so there never was a proper license and nothing to revoke (the copyright owner grants permission in the form of "a license" which is a legal abstraction, that normally is specified in the license document). An end-user snared by this illegal license might attempt to sue the author because of the legal screw-up but paragraph 9 says that the supposed licensor cannot be held liable. In this case, though, "licensor" is defined not as the person who hands you the license document, but as the copyright owner. So it's the employer who would be not liable under the terms of the document (but since the employer had nothing to do with the license, it's as though the license never existed).

The end-user is a secondary infringer (the employee is the primary infringer, in illegally distributing the material). Under US law, that doesn't matter, the user is still liable. Under UK law, secondary infringement includes the element that you have to have reason to know that the copy is infringing, which in the scenario that you describe is not the case.

user6726
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    I'm a little confused about part of the argument. Near the start, you say that "there never was a proper license and nothing to revoke". But after that, you cite Paragraph 9 of the license, as though Paragraph 9 were still valid. Does this mean that the license continues to hold legal weight despite not being proper? And if so, could you clarify what it means for the license to not be proper? This is, what's the legal significance of the license if it's not proper? – Nat Jun 11 '19 at 20:23
  • What if the employee breaches the contract and does not in fact assign copyright to her employer, as she promised to do? Say she goes out and registers it herself. Does the company have to go to court to compel the transfer of the (intangible) copyright? Or did they just "actually" have it from the beginning, and the registration would have been fraudulent even if the employee had intended to transfer the registration to the company when they got it? Does the precise language of the contract in which the employee promised to hand over copyright matter? – interfect Jun 11 '19 at 21:53
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    @interfect There is no copyright registration in the UK, and yes the company does actually have it from the beginning even if there was copyright registration. – Greendrake Jun 11 '19 at 23:09
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    Even in the US, the end-user would likely have a rather strong innocent infringement defense, given the facts as stated. – Kevin Jun 11 '19 at 23:33
  • @Nat - The employer might have hard time proving that the "license" (document) was attached to the software without employer's knowledge or initiative, especially if their former employee no longer cooperates. On the other it will be easy for them to prove that they cannot be held liable for the "legal screw-up" if the "license" is the only component of the "legal screw-up". – Jirka Hanika Jun 12 '19 at 07:05
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    As I understand it, employees can bind their employer in contracts by having implied authority to do it because of their position - eg, a car salesman who sells you a car can't ask for it back just because he'd forgotten he had been forbidden from doing it by his employer.

    Is there no question of this here? Could an employee have implied authority to issue a licence that third-parties could rely on, even if the employee is breaching the employment contract?

     – Alex Hayward Jun 12 '19 at 07:12
  • @AlexHayward - That can depend on jurisdiction, on whether the car sales happened on premises of the employer while they were open for business, whether the "salesman" was a current employee or former employee, on whether the paperwork signed and things handed over would be adequate for establishing good faith on the side of the customer, etc. In the OP scenario, job description of the employee-at-the-time would be very relevant, but likely also quite elastic. – Jirka Hanika Jun 12 '19 at 08:05
  • @Greendrake yes there is, though as with every party to the Berne Convention including the US, copyright is automatic regardless of registration. – OrangeDog Jun 13 '19 at 11:06
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    But is it not like this: The employee has made two contracts, one with their employer (emplyment contract) and one with you (FOOS license). Since both contracts promise rights to the same piece of software, they cannot be enforced at the same time - so she has broken one of them. - The only difference to decide the validity of both contracts would be timing - since her employment contract was signed first, it prevails automatically ? – Falco Jun 13 '19 at 11:54
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    I can't tell if this is intentional or if you got lucky. In the US this is not so cut-and-dried. There are scenarios for which the employment contract would fall and the license upheld. – Joshua Jun 13 '19 at 15:12
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    I'm not sure this answer is wrong, but it fails to clean up the question's initial confusion about copyright ownership vs. licensing up front, which is likely to confuse people down the line. The fact here is that if someone does not hold copyright, then any "license" they give you is no more valid than the proverbial deed to the Brooklyn Bridge. Its not "revoked"; its forged. The license never really existed in the first place. – T.E.D. Jun 13 '19 at 21:27
  • @Alex Hayward Consider the personhood. If the employee releases this software under their own name then they're not acting, at that time, as an agent of their company. But if all you see is that an employee of a company set up a github for that company and started releasing some ancillary software there under an irrevocable open-source license, well then, that could easily be a legitimate action, even if it later turns out to be one that management was unhappy with. – Eikre Jun 14 '19 at 16:14
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The License is not valid in the first place, as the developer did not have the right to attach the license to his work; the company does.

If someone uses the developer's work, and the company sues them for copyright infringement, the license will not protect that person, since the license isn't enforceable.

To prove this in court, the company will likely have to prove that the employee was under a contract giving them all the rights to his work made whilst in their employment.

Shazamo Morebucks
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    But even if the employer has all rights to the employee's work, the employer can in principle release the code under the Apache licence. And cannot this be performed by any employee acting on behalf of the employer? So they'd probably also have to prove that the employee was not allowed to do business on behalf of the employer to that extent? – Hagen von Eitzen Jun 11 '19 at 21:37
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    The law cannot stop anyone doing something illegal. But if the employer has breached his/her employment contract, the employer doesn't need to go to court to take action against him/her. – alephzero Jun 11 '19 at 22:38
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    @HagenvonEitzen However, the license statement itself likely already contains this information. If it is noted as "copyright " instead of "copyright ", that would seem to make it pretty obvious that the employee was never claiming that the company was granting any license to the software, but rather just asserting that they themselves owned the copyright (which they didn't.) – reirab Jun 11 '19 at 22:45
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    @alephzero The employer can fire the employee without going to court of course, but if they wish to sue the employee for the employer's losses they will have to do so in court. – Martin Bonner supports Monica Jun 12 '19 at 08:46
  • A person can assign his IP rights to another. When the employee created the original work, by contract (assuming there is one to this effect in place) the right is automatically assigned to his employer. I can only advise to the law of england and wales, but this is the stance an english court will take. – Shazamo Morebucks Jun 13 '19 at 16:33
  • @HagenvonEitzen - That would be a completely different question, with a completely different (and more complicated) answer. For the question that was asked here, the actual copyright holder never gave anyone an OpenSource license to use their software in any way, so this answer is correct. This is why the FSF typically requires contributors to sign legal documents attesting to copyright ownership, and reassigning such to them. – T.E.D. Jun 13 '19 at 21:20
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If it reaches court, it will come down to whether she developed it in connection with the work she was employed to do, or whether it was something completely different.

I remember reading about case-law being established by an engineer working for the National Coal Board, who developed and patented a machine for peeling onions in his spare time. The NCB claimed the patent under a "we own everything you invent" clause. The courts decided it was unenforcible. There was no provable connection between whatever he was paid to do, and an onion-peeling machine.

If the employee imported her library into what she wrote for her employer, or if they can prove she worked on it during work hours (commit times might undo her), or if there's an "obvious" overlap of functionality with the paid work, then she is in legal difficulty.

Footnote. The National Coal Board became defunct a long time ago and I've never heard any more of an onion-peeling machine, so it may have been cause for tears all round.

nigel222
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